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Trademark Infringement in India: Types, Penalties & Defences

Trademark Infringement

Trademark Infringement in India: Types, Penalties & Defences

Trademark infringement is the unauthorised use of a trademark or service mark, often leading to confusion about the source of goods or services. Companies can achieve brand recognition and value through their trademarks as they distinguish their products or services. So, the trademark owner must file a case against the infringer or respond properly to the trademark infringement notice to protect their place in the marketplace. In this article, you can learn about the various aspects of trademark infringement, such as types, penalties, cases & remedies, etc.

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What is Trademark Infringement?

Trademark infringement occurs when a person uses a trademark identical or deceptively similar to another party’s registered trademark. It could be a unique symbol, logo, word, phrase, design or combining these elements to represent the goods and services offered by the company. This unauthorised use can confuse consumers and take advantage of the reputation of the registered trademark. With the proper evidence and guidance of a legal professional, the company can protect their trademark.

In India, the Trade Marks Act 1999 offers the legal protection for trademarks. This Act outlines the framework for trademark registration with the guidelines for examination, registration, and renewal process. In case of infringement, it provides remedies for trademarks like injunctions, damages, and accounts of profits.

Types of Trademark Infringement

You can find two types of trademark infringement in India: 1. Direct Infringement and 2. Indirect Infringement. 

1. Direct Infringement

  • Unauthorized Use: The infringement of a trademark only occurs when a person uses the trademark without the owner’s permission. If it is used with the owner’s knowledge, then it is not a violation.
  • Identical or Deceptively Similar: If the used trademark is the same as the registered trademark or consumers are confused between the marks and think they are the same.  
  • Registered Trademark: The Act only protects the trademark registered under India’s trademark registry. If there is an unauthorised use of an unregistered trademark, the passing off law will be employed. A claimant must demonstrate goodwill, misrepresentation, and damage to their reputation to establish a case.
  • Class of Goods or Services: Unauthorized use of the trademark for the propagation of goods or services must come under the same class of unregistered trademark.

2. Indirect Infringement

  • Vicarious Infringement: When a person controls the infringement done by the direct infringer, it comes under vicarious infringement.
  • Contributory Infringement: When a person knowingly provides assistance, support, or contributes to the infringing activities of the direct infringer, it is a contributory infringement.

What are the Grounds of Infringement?

As per Section 29 of the Trade Marks Act, 1999, trademark infringement in India can be accounted for in the following scenarios:

  • Identity with a Registered Mark: Infringement occurs if an unregistered mark is identical to a registered one for the same class of goods and services.
  • Likelihood of Confusion: If an unregistered mark is similar to the infringed mark, causing confusion among consumers.
  • Similarity to a Mark with Reputation: Infringement is established if the unregistered mark resembles a registered trademark with a recognised reputation in the market.
  • Unauthorized Use on Labeling or Packaging: If the registered trademark is used on labelling or packaging without proper authorization, it is an infringement.
  • Unfair Advantage in Advertising: If the registered trademark is used in advertising to gain an advantage detrimental to or against the trademark’s reputation.

Also read: Trademark infringement cases in India

What does not come under Trademark Infringement?

Section 30 of the Trademarks Act 1999 outlines certain conditions where the registered trademark is not infringed. The alleged infringer can use it to defend themselves from the suit for infringement. 

A registered trademark is not considered infringed in the following situations:

  • Using Indicating Characteristics: When the use of the trademark in relation to goods or services merely indicates their kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics.
  • Limitations on Registration: If the trademark is registered subject to certain conditions or restrictions, its use in a manner that falls outside the scope of those conditions or limitations is not considered an infringement.
  • Authorized Use by Proprietor or Registered User: When a person uses the trademark for goods or services connected with the trademark owner or a registered user.
  • Adaptation of Goods or Services: If a person adapts the trademark of the goods or services to be part of or accessory to other goods or services, and if the use is reasonably necessary.
  • Use of Identical or Similar Trademarks: When a registered trademark, which is identical or closely resembles another registered trademark, is used by its rightful owner under the rights granted by registration.

Defences against trademark infringement?

The following defences can be used against trademark infringement.

  • Fair Use: The accused can claim “fair use” as a defense when accused of trademark infringement. This means they either had permission from the trademark owner or didn’t intend to deceive customers. There are two types of fair use,
    • Descriptive Fair Use: This defense applies when a trademark is used for a description purpose rather than targeted on a specific mark on goods and services.
    • Nominative Fair Use: This defense applies when a trademark is used to refer specifically to the products or services.
  • Prior Use: If someone has been using a trademark before it was registered by someone else, they have rights over it, even if the later user registered it. This defence is valid if the defendant has used the mark longer and has built a reputation.
  • Non-use by the Registered Owner: If the trademark owner hasn’t been using the trademark for a long time, the defendant can use it, provided they can prove they have a legitimate reason to do so.
  • Delay and Acquiescence: If the trademark owner delays taking action against infringement, their rights might be seen as waived, allowing others to use the trademark.
  • Generic Use: If the trademark has become generic for the type of goods/services, it loses its distinctiveness and cannot be protected. For example, aspirin and elevator.

Remedies and Penalties against trademark infringement:

Remedies against trademark infringement are categorised into civil and criminal remedies. Choosing the appropriate path depends on the specific circumstances and desired outcome.

Civil Remedies:

  • Injunctions:
    • Temporary Injunction: A court order immediately stopping the infringer from using the trademark until the lawsuit concludes.
    • Permanent Injunction: A long-term court order prohibits the infringer from using your trademark.
  • Damages: Compensation for financial losses or reputational damage suffered due to the infringement. This can include:
    • Actual Damages: Reimbursement for quantifiable losses, like lost sales or profits.
    • Additional Damages: Compensation for intangible harm, like goodwill or brand reputation damage.
  • Account of Profits: An order requiring the infringer to disclose and surrender all profits earned through the infringing use of your trademark.

Criminal Remedies:

  • Imprisonment: The infringer can be jailed for at least 6 months, extendable to 3 years.
  • Fine: The infringer can be fined a minimum of Rs. 50,000 and up to Rs. 2,00,000.


In conclusion, trademark infringement in India poses significant challenges for companies seeking to protect their brand identities. The unauthorised use of trademarks confuses consumers and undermines the value and reputation built by the trademark owner. Understanding the types, penalties, and defences against infringement is crucial for safeguarding one’s place in the marketplace. Contact IndiaFilings experts to give professional guidance to clear your trademark infringement notice.

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