You have a remedy whether or not you registered the mark. Registration simply makes it much easier.
| Infringement | Passing off | |
|---|---|---|
| Requires | A registered mark | Reputation and goodwill, registration not needed |
| What you prove | Use of an identical or deceptively similar mark | Reputation, misrepresentation and damage |
| Evidential burden | Lighter, the registration does much of the work | Heavier, goodwill must be established |
| Where you can sue | Also where you reside or carry on business | Ordinary rules of jurisdiction |
| Remedies | Injunction, damages or account, delivery up | The same reliefs |
Registered: infringement
Section 29 of the Trade Marks Act, 1999 is engaged where a person who is not the proprietor uses, in the course of trade, a mark identical or deceptively similar to the registered mark, in relation to the same or similar goods or services, in a way likely to cause confusion. For an identical mark on identical goods, confusion is presumed, which is precisely why registration is worth having. Section 29(4) extends protection to dissimilar goods where the mark has a reputation in India and the use takes unfair advantage of it.
Unregistered: passing off
A common law action, preserved by Section 27(2). You must prove the classic trinity: goodwill in the mark, a misrepresentation by the defendant leading to confusion, and damage or likelihood of damage. It is more evidence-heavy than infringement because you have to build the reputation from scratch with sales figures, advertising, and market presence.
Where you can sue, and why registration changes it
This is the practical difference nobody mentions until the plaint is drafted. For a suit on a registered mark, the district court having jurisdiction includes the court where the person instituting the suit actually and voluntarily resides, carries on business, or personally works for gain. A Bengaluru proprietor can sue at home, and the infringer travels.
That extension applies to suits on a registered mark. It does not extend to a pure passing off claim, which falls back on the ordinary rules of where the defendant resides or where the cause of action arose, so an unregistered owner may find himself litigating in the infringer's city. No suit of either kind may be filed in a court inferior to a district court.
The sequence that works
- Evidence first. Screenshots with visible URLs and dates, archived pages, purchase of the infringing product with an invoice, and a record of your own first use.
- Cease and desist notice. Specific, with a deadline, and a demand to stop use, withdraw stock, transfer any domain and confirm compliance in writing. A large proportion end here.
- Platform takedowns, in parallel: the brand registry mechanisms of the marketplace, the domain registrar for a confusingly similar domain, and the social platform's IP form.
- Suit and interim injunction before the appropriate court, seeking an ad interim injunction, and where required, an Anton Piller style order for local commissioners to seize infringing goods.
On the notice, tone is a tactical choice rather than a moral one. An overstated notice to a small trader who adopted the mark innocently invites a groundless threats defence and reads badly when put before a court. Set out your registration number and date, the use complained of with evidence, what you require, and a realistic deadline. Our note on a cease and desist notice for IP infringement covers what to include and what to leave out.
On relief, the Act is more generous than most plaintiffs ask for. A court may grant an injunction and, at the plaintiff's option, either damages or an account of profits, with delivery-up of the infringing labels and marks. The injunction may be ex parte, and may include discovery of documents, preservation of infringing goods and evidence, and a restraint on the defendant dealing with assets in a way that would defeat a later money decree. Plead each specifically; they are not implied.
One caution about money. Damages or an account of profits may be refused where the defendant satisfies the court that when he adopted the mark he was unaware and had no reasonable ground to believe it was registered or in use, and that he stopped as soon as he learned of it. That is why the dated cease and desist notice matters: everything after it is knowing use.
Interim injunctions in IP cases turn on urgency. Waiting a year after you learned of the use, and then claiming irreparable harm, invites the answer that you acquiesced. Act within weeks, not months, and keep the record showing when you first became aware.
When the use is in advertising rather than on goods
A growing share of these disputes involve no product at all: a competitor bids on your brand name as a search keyword, runs it in ad copy, or buys a confusingly similar domain to catch your traffic. The principle is the same, use in the course of trade, but the evidence is different and disappears quickly. Record the search, the advertisement as served, the landing page and the date, and preserve it independently. Our note on competitors bidding on your brand name in Google Ads sets out how these cases are argued.
Criminal remedies
Falsifying or falsely applying a trade mark is an offence under Sections 103 and 104, punishable with imprisonment and fine, and these are cognizable. Criminal complaints are used mainly against counterfeiters rather than in genuine commercial disputes.
The punishment is imprisonment of not less than six months, extending to three years, and a fine of not less than Rs 50,000, extending to Rs 2 lakh, with a discretion to go below either for adequate and special reasons recorded in the judgment.
The search and seizure power carries a condition worth knowing before you approach the police. An officer not below the rank of deputy superintendent may search and seize without a warrant, but the section requires that officer to obtain the opinion of the Registrar on the facts before the search, and to abide by it. Raids conducted without it are routinely challenged. Our guide on trademark infringement, the tests and the remedies covers how the civil and criminal tracks are best sequenced, which usually means the suit first and the criminal complaint reserved for genuine counterfeiting.