Legal Remedies for Trademark Infringement and Passing Off

Introduction

In a fast-paced world with innovations happening by the second, the growth and awareness for intellectual property have become a necessity. Businesses are heavily reliant on their more prized asset; that is, in order to secure this identity, intellectual property laws provide a trademark. A trademark is a form of intellectual property that distinguishes a product from another. With the advent of a competitive and fierce market, the scope of unauthorized use of such trademarks has come under the radar; it is not improbable for a brand owner to wake up one morning and realize a rival business has launched a product eerily similar to yours—same name, same logo, and even the same colours. Your hard-earned brand identity is now in jeopardy, your customers are perplexed, and your reputation is on the line. Intellectual property law acts as a vital safeguard to stop such unfair practices by shielding brand owners from the possibility of illegal trademark use.

 Two Primary legal concerns that brand owners/trademark owners are faced with are trademark infringement and the passing off of trademarks. 

1. Trademark infringement refers to the copying of registered trademarks and involves the unauthorized use of trademarks by other competitors.
2. Passing off of trademarks refers to a common law tort wherein competitors misuse an unregistered trademark. It is based on the principle that “no man should benefit from another’s reputation.

The misuse of one’s trademarks in India is governed by the Trade Marks Act 1999. This article will analyze and scrutinize the various remedies trade mark owners can avail for infringement and passing off of trademarks in India

The Legal Framework Governing Trademarks in India

The Trademarks Act 1999

The Trademarks Act is the primary legislature that governs trademark protection in India. It provides registration, security, enforcement, and penalties for the misuse of trademarks.

Key features of Trademark Act 1999

1. Definition of Trademark (Section 2(1)(zb)) – A trademark includes any word, symbol, name, design, or combination that distinguishes the goods/services of one entity from another.
2. Trademark Infringement (Section 29) – Unauthorized use of a registered trademark that is identical or deceptively similar to another registered mark.
3. Passing Off (Section 27(2)): This provision acknowledges unregistered trademarks’ common law rights, enabling the owner to pursue legal action for deceptive advertising and goodwill harm.
4. Remedies – Offers civil (injunction, damages), criminal (fine, imprisonment), and administrative (opposition, rectification) remedies against trademark violations.

Common Law principles

Even if a trademark is not registered, such trademarks can seek protection under the common law principle of passing off. This remedy is based on the principle that no man should benefit from another’s reputation. Section 27(2) deals with unregistered trademarks.

In order to claim to pass off the injured brand, the owner must establish the ‘classic trinity.’

The English judiciary laid down the principle of the classical trinity, which defines the essential elements of a passing-off action. This concept was discussed in the case of Oertil v. Bowman (1957) RPC 388, where the court outlined three key elements:

1. the goodwill associated with the injured party,
2. a misrepresentation by the defendant, and
3. resulting damage suffered by the injured party.

Remedies

Civil Remedies for Trademark Infringement Under the Trade Marks Act, 1999 are listed under Section 135 of the Trade Marks Act, 1999, an injured party in a suit for infringement or passing off is entitled to seek the following legal remedies:

Injunctions (Section 135(1) & (2))

The court may grant an injunction, including ex parte or interlocutory relief, to:

Restrain further unauthorized use of the trademark.

Preserve infringing goods, documents, or other evidence relevant to the proceedings.

Prevent the defendant from alienating or dealing with assets in a manner that may hinder the injured party’s ability to recover damages or costs.

Damages or Account of Profits (Section 135(1))

At the option of the injured party, the court may award:

Compensatory damages for losses suffered due to infringement or

An account of profits requiring the defendant to disgorge financial gains derived from the unauthorized use of the trademark.

3. Delivery-Up and Destruction (Section 135(1))

The court may order the seizure, delivery, and destruction or erasure of infringing labels, marks, or goods to prevent further infringement.

4. Exceptions to Monetary Relief (Section 135(3))

The court shall not award damages (other than nominal damages) or an account of profits in cases where:

The infringement relates to a certification trademark or collective mark.

The defendant demonstrates that they were unaware of the registered trademark and ceased use upon gaining knowledge.

In a passing-off action, the defendant proved they had no reasonable ground to believe the injured party mark was in use and discontinued use immediately upon awareness.

Criminal Remedies for Trademark Infringement Under the Trade Marks Act, 1999

Trademark infringement in India is not only a civil wrong but also a criminal offence under Sections 103–109 of the Trade Marks Act, 1999. These provisions impose strict penalties to deter counterfeiting and unlawful use of trademarks.

1. Penalty for Applying False Trademarks (Section 103)

Any person who falsifies or falsely applies for a trademark, manufactures tools for falsification, or applies false trade descriptions to goods/services shall be liable for the following:

Imprisonment: 6 months to 3 years

Fine: ₹50,000 to ₹2,00,000

2. Penalty for Selling Goods with False Trademarks (Section 104)

Anyone who sells, hires, or possesses goods/services with false trademarks or missing required indications (as per Section 139) is punishable with:

Imprisonment: 6 months to 3 years

Fine: ₹50,000 to ₹2,00,000

3. Enhanced Penalty for Repeat Offenders (Section 105)

A person convicted for a second or subsequent offence under Section 103 or 104 faces a higher penalty:

Imprisonment: 1 year to 3 years

Fine: ₹1,00,000 to ₹2,00,000

4. Penalty for Removing Unmarked Goods (Section 106)

If a person removes, sells, or possesses unmarked goods (required to be marked under Section 81), the goods shall be forfeited to the government, and the offender may be fined up to ₹1,000.

5. Penalty for False Representation of Trademark Registration (Section 107)

Any person falsely representing that a mark is registered or that a registered trademark applies to goods/services beyond its registration is subject to:

Imprisonment: Up to 3 years

Fine: Or both

6. Penalty for Misrepresenting Connection with the Trade Marks Office (Section 108)

If a person misleads others into believing that their business is officially connected with the Trade Marks Office, they may face:

Imprisonment: Up to 2 years

Fine: Or both

7. Penalty for Falsification of the Trademark Register (Section 109)

Any person who falsifies entries in the trademark register or presents false copies as evidence shall be punished with:

Imprisonment: Up to 2 years

Fine: Or both

Administartive Remedies

These include the actions taken by the Registrar of Trademarks and authorities under the Act :

(a) Opposition Proceedings (Section 21)

Any person can file an opposition against a trademark application within four months of its advertisement in the Trademark Journal.

If successful in opposition, the mark will not be registered.

(b) Rectification of Register (Sections 57 & 58)

Any aggrieved person can apply for removal, cancellation, or modification of a trademark entry in the Trademarks Register due to non-use, fraud, or error.

(c) Well-Known Trademark Protection (Section 11(6)–(9))

The Registrar can declare a trademark as well-known, preventing others from registering similar marks, even in unrelated goods/services.

2. Border Enforcement / Customs Remedies (Section 140)

Trademark owners can file a customs recordation request to prevent the importation of counterfeit goods.

Customs authorities have the power to detain, seize, and destroy counterfeit trademarked goods at entry points.

Case Laws

A. Civil Remedies – Injunctions, Damages, and Destruction of Goods

In Hindustan Unilever Ltd. v. Reckitt Benckiser India Ltd. (2020),

the Delhi High Court granted an interim injunction to stop misleading advertisements. Reckitt Benckiser was accused of disparaging Hindustan Unilever’s toilet cleaner, Harpic. The court ruled that comparative advertising cannot mislead consumers or unfairly damage a brand’s reputation. This case reinforced the legal principle that advertisements should not falsely degrade a competitor’s product.

Cadbury India Ltd. v. Neeraj Food Products (2007),

where the defendant used purple packaging similar to Cadbury’s Dairy Milk. The court held that such use amounted to passing off, as it misled consumers into believing that the product was associated with Cadbury. A permanent injunction and damages were awarded, highlighting the protection of trade dress under Indian trademark law.

In Louis Vuitton Malletier v. Manoj Khurana (2012),

 the defendant was selling counterfeit Louis Vuitton handbags. The Delhi High Court ordered the seizure and destruction of counterfeit goods, ensuring that fake luxury products do not dilute the brand’s exclusivity.

B. Criminal Remedies – Punishment and Seizure of Counterfeit Goods

In the State of Delhi v. Mohd. Afzal & Others (2005),

Facts:  the police seized large quantities of counterfeit Nokia mobile phones in Delhi.

Judgement: The court convicted the accused under Sections 103 and 104 of the Trade Marks Act, 1999, sentencing them to three years of imprisonment and a fine.

In The Coca-Cola Company v. Bisleri International Pvt. Ltd. (2009),

Facts: Bisleri continued to sell “Maaza” under its brand name despite transferring ownership rights to Coca-Cola. Coca-Cola sought criminal prosecution, and the Judgement court ruled that unauthorized use of a trademark after its assignment is a punishable offence.

Samsung Electronics Co. Ltd. v. Gagan Trading Co. (2012),

Facts: where Samsung discovered fake mobile chargers being sold with their branding.

Judgement: The Delhi High Court ordered police raids and seizure of counterfeit Samsung products

C. Administrative Remedies –

Opposition and Rectification of Trademarks

In N.R. Dongre v. Whirlpool Corporation (1996),

 Facts: an Indian company attempted to register “Whirlpool” as its trademark despite the global reputation of Whirlpool Corporation.

Judgement: The Supreme Court ruled that foreign brands with transborder reputations are protected in India, even if they are not actively using the trademark within the country. This case established the Doctrine of Transborder Reputation.

Yahoo! Inc. v. Akash Arora (1999),

Facts: where a domain name similar to Yahoo! (YahooIndia.com) was registered by the defendant.

Judgement: The Delhi High Court ruled that cybersquatting—registering domain names deceptively similar to famous trademarks—is illegal, setting an important precedent for internet-based trademark protection.

In Bata India Ltd. v. Pyare Lal & Co. (1985),

Facts: the defendant attempted to register “Batafoam,” arguing that it was unrelated to Bata’s footwear business.

Judgement: The court held that even indirect association with a well-known brand could mislead customers, and thus, the registration was blocked.

Conclusion

India has a strong trademark enforcement system that includes civil, criminal, and administrative remedies under the Trade Marks Act of 1999. The Trade Marks Act 1999 proves to be an invaluable asset to the working of intellectual property rights in India.  Injunctions, damages, and the destruction of infringing goods are the core features of civil remedies that protect trademark owners against unauthorized use.  Criminal provisions under Sections 103 and 104 impose harsh penalties, including fines and imprisonment, to prevent counterfeiting. Administrative measures such as opposition and rectification proceedings are used to avoid or correct incorrect trademark registrations. Effectively implementing these remedies safeguards consumer interests, promotes fair competition, and strengthens brand protection.