Trademark Infringement in India – Sperso Filings

Trademark infringement occurs when a registered mark is used without permission, causing confusion and harming brand reputation. Sperso Filings helps protect your trademark by monitoring misuse, sending legal notices, and pursuing action when needed. We assist in securing your brand both in India and globally, ensuring your identity stays protected.

What is Trademark Infringement?

Trademark infringement is the unauthorised use of a registered mark or one that closely resembles it, leading to confusion among consumers. It can harm a brand’s reputation, dilute trademark rights, and mislead the public. Indian law allows trademark owners to take legal action, including claims for damages and injunctions, to stop misuse and protect their brand identity. Sperso Filings ensures your trademark remains safe and legally enforced.

Importance of Trademark Protection

• Builds Brand Trust: A registered trademark signals authenticity, helping consumers identify and trust your products or services.
• Exclusive Ownership: Grants legal rights to your brand name, logo, or slogan, preventing others from using it without permission.
• Product Differentiation: Distinguishes your offerings in the market and avoids customer confusion.
• Use of ® Symbol: Confirms official registration and legal protection.
• Legal Safeguard: Empowers you to take action against infringement, including legal claims for damages.
• Boosts Brand Value: A protected mark enhances recognition and long-term brand equity.
• Broader Protection: Ensures legal coverage across regions and platforms, both in India and globally.

Understanding Trademark Infringement

Trademark infringement occurs when someone uses a brand name, logo, or symbol that is identical or confusingly similar to a registered trademark, leading to customer confusion.

As per Section 29 of the Trade Marks Act, 1999:

• Identical or Similar Marks: Using a mark that is the same or deceptively similar to a registered one for the same goods/services.
• Different Goods/Services: Even if used for different goods/services, it may be infringement if it harms the original brand’s reputation.
• In Advertising: Using someone else’s trademark in ads unfairly or misleadingly is also considered infringement.

Legal remedies include: court injunctions, monetary damages, seizure of infringing products, and more.

Types of Trademark Infringement

1. Direct Infringement

• Involves unauthorised use of a registered trademark.
• Occurs when the infringing mark is identical or deceptively similar and used for similar goods or services.
• Intent is not required — even accidental use may count.
• Example: A business uses another company’s registered logo on its products without permission.
• Legal basis: Covered under Section 29 of the Trade Marks Act, 1999.

2. Indirect Infringement

• Involves supporting, encouraging, or benefiting from direct infringement.
• Includes vicarious liability or contributory infringement.
• The party may not directly use the mark but is still legally responsible.
• Example: A shop knowingly sells counterfeit products that copy a registered brand.
• Legal basis: Based on common law principles and judicial interpretations.

Trademark Infringement vs. Passing Off

• Type of Remedy: Infringement is a statutory remedy; passing off is under common law.
• Registration Requirement: Infringement requires registration; passing off does not.
• Scope: Infringement protects registered rights; passing off protects goodwill.
• Legal Mechanism: Infringement is statutory; passing off is judge-made law.
• Jurisdiction: Infringement is about statutory rights; passing off about business reputation.

Common Examples of Trademark Infringement

• Similarity of the Marks: Marks that look or sound similar, especially in related industries, can cause customer confusion.
• Related Goods or Services: Even in different sectors, confusion about the origin of products can still be considered infringement.
• Strength of the Plaintiff’s Mark: Well-known trademarks receive broader protection against misuse.
• Evidence of Actual Confusion: If customers are misled, it supports a claim of infringement.
• Intent of the Defendant: Copying a known mark in bad faith can lead to stricter penalties.

Legal Framework for Trademark Infringement

The Trademark Act, 1999 governs trademark infringement in India. It protects brand owners from unauthorised use of identical or confusingly similar marks that may mislead consumers.

Trademark infringement can arise under:

• Statutory law (Trademark Act, 1999)
• Common law (passing off)
• International treaties (like the Madrid Protocol)

The Trademarks Act, 1999 – At a Glance

• Registration: Grants exclusive rights and prevents unauthorised usage.
• Infringement: Involves using a registered or similar mark without consent.
• Legal Remedies: Includes injunctions, compensation, and destruction of infringing goods.

Role of the Intellectual Property Appellate Board (IPAB)

• Handles Appeals: Reviews decisions of the Trademark Registry.
• Safeguards IP Rights: Assists businesses in enforcing trademark ownership.
• Sets Legal Precedents: Guides future infringement cases.

Legal Provisions Related to Trademark Infringement

Section 29 – Infringement of Registered Trademarks

• Using an identical mark for similar goods/services without consent.
• Using a deceptively similar mark causing confusion among consumers.

Section 135 – Remedies for Infringement

• Injunctions to stop further use.
• Compensation for losses and legal costs.
• Destruction of infringing goods.

International Treaties Related to Trademark Protection

TRIPS Agreement (WTO)

• Sets minimum protection standards.
• Enforces legal tools to prevent infringement.
• Encourages international cooperation.

Madrid Protocol – Global Trademark Protection

• Single Application: One filing covers multiple countries.
• Global Coverage: Protects trademarks internationally.
• Centralised Management: Simplifies renewals and updates.

Identifying Trademark Infringement

Trademark infringement involves unauthorised use of a registered or similar mark that confuses customers about the product's origin, harming the brand’s value.

Key Elements to Prove Infringement

• Valid Trademark: Proof of lawful registration.
• Unauthorised Use: Use without consent.
• Likelihood of Confusion: Misleading similarities.

Factors considered:

• Similarity of marks
• Nature of goods/services
• Customer perception
• Marketing channels
• Defendant’s intent
• Strength of original mark
• Market overlap

How to Prevent Trademark Infringement

• Trademark Registration
• Trademark Search
• Monitor Usage
• Educate Staff/Partners
• Collect Evidence
• Consult Legal Experts
• Use the Mark Regularly

Importance of Trademark Registration

• Legal Protection
• Exclusive Rights
• Builds Goodwill
• Easy Identification
• Quality Assurance
• Business Asset
• Ⓡ Symbol Usage
• Legal Action Against Infringers
• 10-Year Validity (Renewable)

How to Monitor and Safeguard Your Trademark

• Trademark Search & Watch
• Market Checks & Surveys
• Track Competitors
• Send Legal Notices
• Use Trademark Watch Services

Legal Remedies for Trademark Infringement

Civil Remedies

• Injunctions
• Damages & Account of Profits
• Delivery of Infringing Goods

Criminal Remedies

• Penalties & Fines
• Imprisonment

Administrative Remedies

• Trademark Opposition
• Rectification & Cancellation

Filing a Trademark Infringement Lawsuit

• Ownership Proof: Prove trademark registration.
• Infringement Proof: Show unauthorised use.
• Market Confusion: Demonstrate consumer confusion.
• Legal Action: File in the appropriate court.

Steps to File:

1. Cease-and-desist letter
2. Negotiation
3. Draft and file complaint
4. Collect evidence
5. Choose jurisdiction
6. Follow court procedures
7. Civil proceedings
8. Settlement or mediation

Defending Against Trademark Infringement Claims

• No Confusion: Show dissimilarity of marks.
• Prior Use: Use of mark before plaintiff’s registration.
• Good Faith Use: Honest and independent usage.

Responding to Cease-and-Desist Letters:

• Review and understand claims
• Consult an attorney
• Collect supporting evidence
• Respond properly

Best Practices to Avoid Trademark Disputes

• Conduct Thorough Trademark Searches
• Register All Trademarks
• Monitor Market and Online Platforms
• Use Clear and Distinct Branding
• Educate Your Team

Famous Trademark Infringement Cases in India

• Bajaj Auto v. TVS Motors: Court ruled in favour of Bajaj.
• Amul v. Nestle: Court protected Amul’s mark against dilution.
• ITC v. Philip Morris: ITC won protection for ‘Gold Flake’.

Lessons Learned from High-Profile Trademark Disputes

• Unique Branding Matters
• Stay Vigilant
• Keep Legal Documentation
• Consumer Perception is Crucial
• Negotiate Early Where Possible

Why Sperso Filings?

Choosing Sperso Filings for trademark infringement protection means your brand is backed by experts. Our team specializes in trademark law and offers deep analysis of infringement risks to protect your intellectual property.

We focus on quick and effective solutions, designing custom strategies for each case. From sending legal notices to full case support, we offer end-to-end services—so you're guided at every step.

With Sperso Filings, you get reliable legal protection, strong enforcement, and peace of mind knowing your brand is in safe hands.