Trademark Infringement Lawsuit in India: Notice, Injunction, Damages — the Case, Step by Step

You found it on a Tuesday. A competitor has filed a trademark application for a name that sounds like yours read aloud — or worse, their product is already on the shelf under it. Your first instinct is "sue them". Hold that thought for one page, because in trademark law the order in which you do things decides how much each step costs, and how much of it you win.

There are two different fights here, in two different buildings. If the other side has only filed an application, your fight is at the Trade Marks Registry — opposition: cheaper, narrower, and timed by a window that does not reopen. If they are selling under the mark, your fight is in court — a suit for infringement or passing off. Many real disputes need both, in that order. This guide walks the court case step by step, and shows you where the Registry fight fits.

First, work out which fight you are in

Do not file a suit to stop an application nobody is using yet — a court decides disputes about use in trade; a bare application is the Registry's business. Equally, do not sit in opposition proceedings while the other side floods your market; the Registry cannot order them off the shelf. Match the remedy to the act.

If it is still an application: opposition, and the four-month clock

After examination, every accepted application is advertised in the Trade Marks Journal. Section 21 of the Trade Marks Act, 1999 gives any person four months from that advertisement to file a notice of opposition, in Form TM-O — the Registry's e-filing fee is ₹2,700 per class. Your grounds write themselves in a case like this: your earlier registered mark, the deceptive similarity, the identical or similar goods, the likelihood of confusion.

The applicant then has two months from receiving your notice to file a counter-statement; silence costs them the application, which Section 21 treats as abandoned. Evidence rounds and a hearing before the Registrar follow. Four months sounds generous. It is not, once you subtract the weeks spent discovering the filing, taking advice and drafting grounds — which is why brand owners run watch services on the Journal. The cheapest trademark lawsuit is the application that never becomes a registration.

If they are already selling: infringement or passing off?

Everything turns on whether your mark is registered.

Registered mark — infringement, Section 29. Section 28 gives the registered proprietor the exclusive right to use the mark for the goods or services covered. Section 29 says a registered mark is infringed when a person who is not the proprietor, and has no permission, uses in the course of trade a mark identical with, or deceptively similar to, yours, on identical or similar goods or services, in a way likely to cause confusion or an association with your mark. Where both the mark and the goods are identical, Section 29(3) goes further: the court shall presume confusion is likely. You need not prove that a single customer was actually fooled. The certificate is your standing; the comparison of the marks is the battle.

Unregistered mark — passing off, Section 27. Section 27(1) is blunt: no infringement action lies for an unregistered mark. But Section 27(2) preserves the common-law action for passing off, and it is a heavier lift. You must prove three things in sequence — your goodwill in the mark, a misrepresentation by the defendant likely to make buyers treat their goods as yours, and damage, or a real likelihood of it. Owners of young, unregistered brands lose winnable fights here because the goodwill evidence was never kept.

Step one in practice: build the evidence file before any letter goes out

Courts decide these cases on paper that predates the quarrel. Before anyone writes to the other side, I want one folder holding: your registration certificate and renewal record; dated invoices, packaging and advertisements showing your use, oldest first; and the other side's material — dated screenshots, marketplace listings, their Journal advertisement, and a purchased sample of their product with the bill kept. A trap purchase, made through a neutral buyer and preserved as bought, is worth more in a courtroom than a folder of outrage.

Preserve first, write second. A letter sent before the evidence is frozen teaches the other side what to delete.

The cease-and-desist notice: not in the Act, and still the most useful letter you will send

Let me be precise about status, because most guides are not: no section of the Trade Marks Act requires, or even mentions, a cease-and-desist notice. It is practice, not statute. Send it anyway, for three reasons that are each worth the stamp.

One, a large share of copycat disputes end here — a small trader who copied in ignorance, or on bad advice, often folds when a lawyer's letter sets out a registration number and a deadline. Two, it fixes the other side with knowledge. Under Section 135(3), a defendant who satisfies the court that they had no reasonable ground to know your mark was registered, and who stopped when they learnt of it, is sheltered from anything beyond nominal damages. Your notice burns that shelter down, politely, on a recorded date. Three, the notice and its reply — or its silence — become part of the story the judge reads first.

A notice that works names your mark and registration number, identifies their mark and where it is used, states the acts you say infringe, and demands specific things: stop the use, withdraw the application, undertake in writing not to resume, and deliver up or destroy the offending labels and stock. It sets a short, stated deadline, and says a suit follows without further warning. What it never does is threaten criminal prosecution to squeeze a settlement, or demand a sum pulled from the air. Judges read these letters. Write the one you would be content to see annexed to a plaint.

If the notice fails: filing the suit

Section 134 fixes the forum. No suit for infringement, or for passing off, shall be instituted in any court inferior to a District Court having jurisdiction. For an infringement suit, or a suit about rights in a registered mark — clauses (a) and (b) of Section 134(1) — Section 134(2) adds the part plaintiffs care about: you may file where you actually and voluntarily reside, carry on business, or personally work for gain — the Act lets the brand owner sue from home ground instead of chasing the infringer to theirs. That home-forum wording does not extend to a passing-off suit under clause (c).

Trademark suits are commercial disputes under the Commercial Courts Act, 2015, so where a Commercial Court or Commercial Division exists, the suit runs there, with that Act's discipline: strict timelines, documents front-loaded with the plaint, and a specified value of ₹3 lakh for commercial-court jurisdiction. Some High Courts hear these cases in dedicated IP divisions. One procedural gate deserves its own line: Section 12A of that Act normally requires pre-institution mediation before a commercial suit — unless the suit contemplates urgent interim relief. A live infringement, bleeding goodwill every week, is the textbook case for that exception, and courts have accepted ongoing IP infringement as grounding the urgency. Plead it expressly; do not let a mediation queue become the infringer's free season.

The plaint asks for the final reliefs under Section 135, and almost always carries an application for an interim injunction alongside. That application is where the early case is won or lost.

The interim injunction: the hearing that decides the market

An interim injunction is the court's order, made early and on a first look at the papers, restraining the defendant from using the mark while the suit is pending. Suits take time. Markets do not wait, which is why this hearing matters more than any other single date in the case.

The court weighs connected factors, and weakness in any one can sink the application. A prima facie case — a serious question to be tried, not a frivolous claim. A likelihood of confusion, on a first assessment of the two marks compared as wholes, as a buyer of average intelligence and imperfect recollection would meet them. The balance of convenience: the harm you suffer if they keep selling must outweigh the harm they suffer if stopped and later vindicated. And irreparable harm — injury money cannot cleanly repair; courts treat the steady dilution of a brand and the deception of your buyers as exactly that. Where public health or safety rides on the confusion — lookalike medicines are the standing example — public interest weighs in too.

In a genuinely urgent case the court can pass this order ex parte, before the defendant is heard, and Section 135(2) lets the injunction carry working machinery with it: discovery of documents, preservation of the infringing goods and evidence, and a restraint on the defendant disposing of assets in a way that would defeat a later money award. Expect the other side to argue prior use, honest adoption and differences between the marks — and expect the judge to test your papers, not your indignation.

What winning actually gives you: the Section 135 menu

Section 135(1) lists what a court may grant at the end of a suit for infringement or passing off. An injunction — the permanent version of the interim order, restraining the use for good. Money, in one of two shapes, at your option: damages, or an account of profits. And, with or without the money, an order for delivery-up of the infringing labels and marks, for destruction or erasure.

Damages and an account of profits sound like two names for one cheque. They are not. Damages ask: what did I lose — the sales diverted, the price erosion, the corrective advertising I had to buy. An account of profits asks: what did they gain — every rupee earned under my mark, which they must hand over. It is the difference between claiming for your own emptied till and claiming the notes sitting in theirs. You must elect one; you cannot take both, and the right choice depends on whose books tell the bigger, provable story. There is no tariff in the Act, and no standard figure an honest lawyer can quote at the first meeting. Anyone who promises a number before seeing the defendant's sales is selling, not advising.

The honest limits: defences that genuinely work

A guide that lists only your weapons is a sales brochure. Three defences regularly cut claims down, and you should hear them from me before you hear them from the other side's counsel.

"We never knew." Section 135(3) again: a defendant who shows they had no reasonable ground to know of your registration, and stopped once they learnt of it, faces at most nominal damages and no account of profits. The injunction can still go against them — innocence limits the money, not the stop order.

"We were here first." Section 34 protects a prior user: a person who has continuously used an identical or similar mark from a date earlier than both your use and your registration keeps the right to that use, and your registration cannot be used to stop them. If the competitor's use genuinely predates yours, your suit is in real trouble, and the evidence folder from step one is where that fight is decided.

"It is my own name / it only describes the goods." The Act does not let a registration swallow honest trade: bona fide use of one's own name or place of business, and honest descriptive use, survive as defences. A surname honestly traded under is a harder target than a copied coined word.

And one limit on your side of the board: delay. Sit on knowledge of an infringement for years while the other side builds a business under the mark, and you hand them arguments about acquiescence and lost urgency that no drafting can fully cure. Speed is not aggression here. It is hygiene.

If their mark got registered anyway

Registration is not armour. If the competitor's mark reaches the register despite your rights, Section 57 lets a person aggrieved apply for rectification — cancellation or variation of the entry — on grounds that include conflict with your earlier mark. If there has been no bona fide use of a registered mark for a continuous period of five years up to a date three months before the application, a person aggrieved can apply under Section 47 to remove it for non-use. The two proceedings often run together: the suit stops the selling, the petition clears the register.

A word on the criminal route, so it sits in its proper place. Sections 103 and 104 punish falsifying a trade mark and selling goods bearing a false mark — on conviction under Section 103, imprisonment from six months to three years and a fine of ₹50,000 to ₹2 lakh. That machinery exists for counterfeiting, and runs through the police and criminal courts on a criminal standard of proof. For a confusingly similar competitor mark, the civil suit above is the main road; treat the criminal provisions as the exception, not the opening move.

The case, on one line each

Watch the Journal and oppose in four months if the fight is still on paper. Freeze your evidence before you announce yourself. Send a notice a judge could read with approval. File under Section 134, from your own city where the Act allows, and fight the interim injunction like it is the final hearing — commercially, it often is. Then let Section 135 do its work: stop the use, elect your money remedy on proof, and take delivery of what bears your name wrongly.

Every step above leans on one foundation: a registration filed early, in the right classes, and kept alive. If your own position needs shoring up — a mark still unfiled, a class left uncovered, a renewal drifting — our trademark registration team will audit what you hold and tell you plainly where the gaps are, before a competitor finds them for you.