Introduction
Trademark infringement takes place when a mark is used without authorization and is either identical or closely resembles a registered trademark. This unauthorized use causes confusion or misleads consumers and business participants about the origin or source of the goods or services. It may also weaken or diminish the unique character of the original trademark.[1] To successfully claim trademark infringement, the plaintiff must establish certain requirements.
Primarily, it is necessary to prove legal ownership of a valid and officially registered trademark. Following this, the claimant must demonstrate that the alleged infringer has employed a mark in commercial landscape that bears a significant resemblance to the registered mark. This resemblance must be substantial enough to create a probability of confusion in the minds of the general public regarding the origin of the goods or services. The central issue in such cases is whether consumers are likely to be misled or deceived.
Courts assess this likelihood of confusion by considering several aspects, including the degree of similarity between the two marks, the closeness of the parties’ respective businesses, the reputation of the plaintiff’s mark in the market, and the similarity of the marketing and distribution channels used by both parties.[2]
Coming down to passing off, it is a tort rooted in common law, arising when an individual represents their goods as those of someone else, thereby misleading consumers. In such situations, the rightful owner of the brand or mark is entitled to pursue legal remedies to protect their commercial identity and reputation. The idea of passing off was developed in the case of Perry v Truefitt (1842)[3] where the Court held that “a man is not to sell his own goods under the pretense that they are the goods of another man”.
The scope of passing off under trademark law has gradually evolved to cover a wide range of commercial, professional, and even non-commercial activities. It plays a particularly vital role in cases where the trademark in question has not been officially registered. Nonetheless, pursuing a passing off action can be challenging, as the claimant must prove that the public is likely to be misled regarding the true origin of the goods or services being offered.[4]
Legal Framework
The primary legislation governing trademarks in India, is the Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’),[5] which serves as the framework for the registration, protection, and enforcement of trademark rights throughout the country. This statute is in compliance with international legal frameworks, particularly the TRIPs Agreement (Trade-Related Aspects of Intellectual Property Rights), thereby ensuring adherence to globally accepted principles of trademark law.
The Act sets out an extensive legal structure that protects trademark holders, offering them remedies through both civil and criminal procedures in cases of infringement or passing off. It affords strong protection not only to standard registered trademarks but also to those classified as ‘well-known,’ allowing for more effective enforcement against unauthorized use.
- Civil Remedies: A trademark owner has the right to bring a civil suit under the provisions of the Act to obtain relief for any form of trademark violation.
- Criminal Remedies: The Act also enables criminal proceedings, with trademark infringement being recognized as a cognizable offence under Indian penal law, thereby empowering law enforcement to take action.[6]
A. Trademark Infringement
According to Section 29 of the Act,[7] trademark infringement occurs when an individual who neither owns the registered mark nor is authorized to use it, uses a mark in the course of business that is identical or deceptively similar to an existing registered trademark. This violation may arise even if the unauthorized use pertains to goods or services different from those for which the original mark was registered, provided the registered trademark enjoys a reputation within India. In such cases, infringement is established if the misuse either takes unfair advantage of or negatively affects the distinctiveness or repute associated with the original mark.[8]
B. Passing Off
Unlike trademark infringement that apply solely to registered marks, passing off offers legal recourse to those relying on the inherent rights arising from use, rather than formal registration.[9]
Section 27(2)[10] of the Act explicitly preserves this common law right by stating that the Act does not affect any action for passing off. The rationale behind passing off is that no person should misrepresent their goods or services as those of another, effectively “passing off” their products to benefit unfairly from the goodwill associated with another business.[11] [12]
The classic test for a successful passing off claim involves establishing the “classical trinity,[13]” as developed originally in English jurisprudence and followed in India:
- Goodwill or reputation in the mark or getup owned by the plaintiff in the market.
- Misrepresentation by the defendant leading to deception or confusion among the public.
- Resulting damage or likelihood of damage to the plaintiff’s goodwill.
Courts have consistently recognized passing off as a powerful means to protect business goodwill and prevent unscrupulous competitors from capitalizing on a brand’s reputation.
Civil Remedies
Civil remedies are primary recourse for trademark owners claiming infringement or passing off in India. Section 135 of the Act,[14] outlines a broad, illustrative range of remedies that may be granted in cases involving trademark infringement or passing off. These remedies are not limited in scope and may include various forms of judicial relief depending on the circumstances of the case.
- Injunctions: The most common civil remedy are injunctions. Injunctions may be temporary (interim relief) or permanent. A temporary injunction prevents further use of the infringing mark pending the outcome of the lawsuit, while a permanent injunction is granted after final determination of the case.[15] An application under Order 39[16] Rule 1[17] and 2[18] of the Civil Procedure Code granted temporary/ ad interim ex-parte injunction. [19]
- Damages or Account of Profits: The trademark owner can seek compensation for financial loss or loss to reputation. Actual damages[20] are awarded for quantifiable losses, whereas additional damages compensate for intangible harm such as dilution of goodwill. Alternatively, courts may order an account of profits,[21] compelling the infringer to disgorge all profits accrued from the infringement.
- Delivery Up or Destruction of Infringing Goods: Courts may direct the infringer to hand over or destroy infringing products,[22] labels, and materials to prevent further misuse.
- Costs: Courts may award costs of the litigation to the successful party to deter frivolous infringement.
Criminal Remedies
Criminal provisions in Indian law introduce punitive measures to deter trademark infringement and passing off. These include:
- Imprisonment and Fines: Sections 103[23] and 104[24] of the Act provide for imprisonment of at least 6 months, up to 3 years, and fines ranging from ₹50,000 to ₹2,00,000 for applying false trademarks or selling goods/services using false trademarks. Repeat offenders under Section 105 [25]attract enhanced punishment.[26] [27] [28]
- Search and Seizure: The Act lists several cognizable offences, empowering police to search premises, seize infringing goods, and arrest without warrant. Complainants can assist authorities during raids.
- Forfeiture of Infringing Goods: Upon conviction, courts may order the destruction or forfeiture of infringing goods and materials
Criminal complaints are generally filed with Magistrate courts, which may direct the police to investigate and take action against the infringer.[29]
Alternative Dispute Resolution (ADR) Mechanisms
ADR offers efficient, cost-effective, and confidential options for resolving trademark disputes outside the court system.
1) Arbitration and mediation in IP disputes
Arbitration provides a binding solution and is suitable where parties agree to resolve disputes via an arbitrator with subject-matter expertise. Judiciary and statutes like the Arbitration and Conciliation Act, 1996,[30] and the Commercial Courts Act, 2015,[31] support ADR in trademark disputes. [32]
2) UDRP (Uniform Domain-Name Dispute-Resolution Policy) for cybersquatting
The UDRP, governed by ICANN, sets an international framework to resolve disputes over domain names registered in bad faith known as cybersquatting. Complainants must show that the disputed domain is identical or confusingly similar to their trademark, the registrant has no legitimate interest, and the domain is registered in bad faith. Decisions can result in cancellation or transfer of the domain to the complainant.
In India, disputes over .in domains follow the INDRP (India Dispute Resolution Policy), adopting a similar three-pronged test as UDRP. [33]
Comparative Analysis
A. Most Stringent Method: Criminal Prosecution
Criminal remedies, state-driven and punitive, aim to not only compensate victims but also punish infringers, sending a strong public deterrence message. The involvement of police and prosecution, possibility of arrest, and risk of imprisonment or significant fines differentiate criminal actions from civil remedies. Successful prosecution requires proof of mens rea (criminal intent) and compliance with stricter evidentiary standards. However, the criminal process can be slow, burdensome, and limits direct control by the trademark owner, as the machinery shifts to state authorities.
B. Least Stringent Method: ADR
Mediation and Negotiation typically involves voluntary discussions between the trademark owner and alleged infringer, often resulting in settlement arrangements, apology, or undertakings. ADR is less adversarial, confidential, cost-effective, relatively quick, and allows creative solutions that litigation cannot offer. The process encourages preservation of ongoing business relationships. However, ADR outcomes, especially mediation are non-binding unless formalized by agreement and often depend on parties’ willingness to cooperate. There may be enforcement challenges if a party defaults on the agreement.
- Landmark Cases
- PUMA SE v. Mahesh Kumar[34]
Puma SE, as the plaintiff, initiated legal proceedings seeking a permanent injunction to prevent the defendant from violating its trademark rights. The plaintiff also requested additional remedies, including compensation for unfair trade practices, an account of profits, damages, and the surrender of counterfeit merchandise. Justice Mini ruled in favor of Puma SE, issuing a permanent injunction that barred the defendant from producing, marketing, or distributing goods falsely bearing the Puma brand.[35]
1) Coca-Cola Company v. Bisleri International Pvt. Ltd.[36]
On 18th September 1993, Bisleri transferred ownership of the intellectual property rights related to various products, including the beverage brand “Maaza,” to the plaintiff. Subsequently, on 12th November 1993, both parties executed an assignment deed formalizing the terms governing the use of the “Maaza” name. In 1994, Coca-Cola obtained full rights to the trademarks and formulations through a Licensing Agreement. In 2008, the plaintiff sought trademark registration for “Maaza” in Turkey. Upon learning of this move, the defendant issued a notice dated 7th September 2008, unilaterally revoking the licensing agreement and asserting that Coca-Cola was no longer permitted to use the “Maaza” mark or produce related products.
The court ultimately ruled entirely in favour of Coca-Cola, holding that Bisleri International Pvt. Ltd. lacked any valid legal basis to dispute the assignment deed or continue its use of the “Maaza” trademark. The Delhi High Court retained jurisdiction and dismissed the defendant’s appeal to set aside the interim injunction. A permanent injunction was granted against Bisleri International Pvt. Ltd., as well as against Varma International, thereby safeguarding Coca-Cola’s exclusive rights. The judgment affirmed the enforceability of the assignment deed and underscored the legal ramifications of unauthorized use of a trademark, both in India and abroad.
2) Yahoo! Inc. v. Akash Arora &Anr[37]
Yahoo Inc. (hereinafter referred to as the “plaintiff”) owned both the registered trademark “Yahoo” and the domain name yahoo.com, which had acquired significant recognition, goodwill, and a distinctive reputation in the digital space. Akash Arora (hereinafter referred to as the “defendant”) began offering online services under the name “Yahoo India,” which closely mirrored those provided by the plaintiff. In response, the plaintiff sought a permanent injunction under Order 39 Rules 1 and 2 of the Civil Procedure Code, alleging that the defendant was using a deceptively similar mark and was attempting to pass off his services as those of the plaintiff.
The court found that internet users were likely to be misled into believing that the defendant’s website was associated with the plaintiff. Although the defendant argued that a disclaimer had been displayed on his website, the court rejected this defense. It held that in the context of the internet, where users often rely on domain names as indicators of origin, a disclaimer was inadequate to prevent confusion. Furthermore, the fact that the word “Yahoo” might appear in the dictionary was considered irrelevant, given that the plaintiff’s mark had achieved distinctiveness and was uniquely associated with its brand identity
3) M/s Shree Vardhman Rice and Gen Mills v. M/s Amar Singh Chawalwala[38]
The Supreme Court emphasized that cases involving intellectual property rights should be resolved promptly by trial courts, without being delayed by unwarranted interim orders or frequent adjournments. Given the dynamic and expanding scope of IPR, coupled with the growing caseload faced by the judiciary, the Court underscored the importance of referring a portion of such disputes to alternative and amicable methods of resolution.
Conclusion
Trademark infringement and passing off remain critical areas of intellectual property protection, particularly in a dynamic commercial environment where brand identity, consumer trust, and market goodwill are invaluable assets. The Indian legal framework, through the Trade Marks Act, 1999 and common law principles, offers a robust and multi-faceted system to combat unauthorized use and misrepresentation of trademarks. While statutory protections under Section 29 provide powerful remedies for registered marks, the enduring relevance of the common law tort of passing off, reinforced by judicial recognition, ensures that even unregistered marks are safeguarded.
Civil, criminal, and alternative dispute resolution mechanisms collectively provide a spectrum of enforcement remedies, balancing deterrence, compensation, and efficiency. Each remedy carries its unique strengths and limitations, with civil suits offering flexible relief, criminal provisions ensuring punitive deterrence, and ADR serving as a pragmatic option for swift, amicable resolutions.
As commerce becomes increasingly global and digital, the enforcement of trademark rights must continue adapting to emerging challenges like cybersquatting, online infringement, and brand dilution. Legal awareness, timely registration, vigilant enforcement, and the strategic use of remedies will remain key to securing and defending trademark interests in the years ahead.
Author: Yashica Dhawan
[1] Sumeet Basu, Trademark Enforcement Strategies: Taking Action Against Infringement, Mondaq – Law Articles and Insights (Apr. 2, 2024), https://www.mondaq.com/india/trademark/1446644/trademark-enforcement-strategies-taking-action-against-infringement.
[2] Khurana And Khurana, Separating Trademark Infringement and Passing off, Khurana And Khurana (Nov. 14, 2024), https://www.khuranaandkhurana.com/2024/11/14/separating-trademark-infringement-and-passing-off/.
[3] Perry v Truefitt (1842) 6 Beav 66, 49 E.R. 749 (United Kingdom).
[4] Gautham Balaji, Essential Guide to Passing Off in the Indian Trademarks Act, 1999, De Penning and De Penning (Dec. 20, 2023), https://depenning.com/blog/passing-off-trademark/.
[5] The Trade Marks Act, 1999.
[6] Basu, supra note 1.
[7] The Trade Marks Act, 1999, §29.
[8] Infringement and Passing Off in Indian Trademarks Act, India Law Firm – India Law Offices | Corporate & Litigation (May 4, 2024), https://www.indialawoffices.com/legal-articles/infringement-passing-off-indian-trademarks-act.
[9] Passing off of Trademark in India:, S.S. Rana & Co., https://ssrana.in/ufaqs/passing-off-of-trademark-in-india/#:~:text=Passing%20off%20in%20India%20is,from%20the%20labour%20of%20another. (last visited July 23, 2025).
[10] The Trade Marks Act, 1999, §27(2).
[11] Balaji, supra note 4.
[12] S.S. Rana & Co., supra note 7.
[13] Niharika Salar & Sonal Sinha, India’s Take on Legal Remedy of P e on Legal Remedy of Passing Off: A Celebrity assing Off: A Celebrity’s Perspective, 17 Indian J.L. & Tech., (2021), https://repository.nls.ac.in/cgi/viewcontent.cgi?article=1107&context=ijlt.
[14] The Trade Marks Act, 1999, §135.
[15] Gautam Balaji, The Concept Of Passing Off In The Indian Trademarks Act, 1999, Mondaq – Law Articles and Insights (Jan. 2, 2024), https://www.mondaq.com/india/trademark/1405970/the-concept-of-passing-off-in-the-indian-trademarks-act-1999.
[16] Code of Civil Procedure, 1908, Order 39.
[17] Code of Civil Procedure, 1908, Order 39, Rule 1.
[18] Code of Civil Procedure, 1908, Order 39, Rule 2.
[19] Remedies For Trademark Infringements, Intepat (Apr. 10, 2021), https://www.intepat.com/blog/remedies-trademark-infringements/.
[20] Ronak Sharma, Trademark Infringement In India- It’s Meanıng, Types And Remedıes, Mondaq – Law Articles and Insights (Oct. 10, 2024), https://www.mondaq.com/india/trademark/1529084/trademark-infringement-in-india-its-meanıng-types-and-remedıes.
[21] Khurana And Khurana, supra note 2.
[22] Trademark Infringement Actions in India: A Guide to Jurisdiction, Remedies, and Case Insights, Unimarks Legal (Nov. 24, 2024), https://unimarkslegal.com/trademark-infringement-actions-in-india-a-guide-to-jurisdiction-remedies-and-case-insights/.
[23] The Trade Marks Act, 1999, § 103.
[24] The Trade Marks Act, 1999, §104.
[25] The Trade Marks Act, 1999, § 105.
[26] Basu, supra note 1.
[27] Atul Dhyani, CIVIL AND CRIMINAL REMEDIES – TRADEMARK INFRINGEMENT & PASSING OFF – KAnalysis Blogs, KAnalysis Blogs, https://blog.kanalysis.com/civil-and-criminal-remedies-trademark-infringement-passing-off/ (last visited July 24, 2025).
[28] Jay Bhardwaj, Criminal Prosecution For IP Violation – R K Dewan – Patent and Trademark Attorney in India, R K Dewan – Patent and Trademark Attorney in India, https://www.rkdewan.com/articles/criminal-prosecution-for-ip-violation/ (last visited July 24, 2025).
[29] Dhyani, supra note 21.
[30] The Arbitration and Conciliation Act, 1996.
[31] The Commercial Courts Act, 2015.
[32] Sinha, supra note 11.
[33] An Analysis Of The Concept Of Cybersquatting & Legal Issues Pertaining To Trademarks In India – Naik Naik, Naik Naik (Nov. 9, 2023), https://naiknaik.com/2023/11/09/an-analysis-of-the-concept-of-cybersquatting-legal-issues-pertaining-to-trademarks-in-india/.
[34] PUMA SE v. Mahesh Kumar (2025) SCC OnLine Del 1449 (India).
[35] Arunima, Delhi High Court grants ₹11 lakh relief to Puma SE in trademark infringement case against counterfeit manufacturer, SCC Times (Mar. 11,2025), https://www.scconline.com/blog/post/2025/03/11/delhi-hc-puma-trademark-infringement-case-legal-news/.
[36] Coca-Cola Company v. Bisleri International Pvt. Ltd (2009) 164 DLT 59 (India).
[37] Yahoo! Inc. v. Akash Arora &Anr 78 (1999) DLT 285 (India).
[38] M/s Shree Vardhman Rice and Gen Mills v. M/s Amar Singh Chawalwala FAO (O) No. 138 of (1996) (India).
Link to similar articles: https://jpassociates.co.in/trademark-registration-process-around-the-world/
