Key points
- Infringement under Section 29 requires a registered mark and a deceptively similar use in respect of the same or similar goods; the plaintiff need not prove reputation.
- Passing off protects unregistered marks but requires proof of goodwill, misrepresentation and likelihood of damage.
- Ex parte and interim injunctions are granted where the marks are near-identical; the IP Division lists suits quickly and follows a case management timetable.
Infringement
Section 29 of the Trade Marks Act, 1999 is infringed when a person, not being the registered proprietor or a permitted user, uses in the course of trade a mark identical or deceptively similar to the registered mark in relation to goods or services covered by the registration, or where the use is likely to cause confusion or takes unfair advantage of a well-known mark. Registration is the foundation; the court compares the marks as a whole from the perspective of an average consumer with imperfect recollection.
Passing off
The common law action protects the goodwill in an unregistered mark, get-up or trade dress. The plaintiff proves goodwill, a misrepresentation by the defendant likely to deceive, and damage. Prior use is decisive: a prior user can even restrain a later registered proprietor.
Relief
Interim and permanent injunctions, delivery up and destruction of infringing goods, rendition of accounts or damages, and costs. The Delhi High Court has awarded substantial damages in cases of deliberate counterfeiting, and passes dynamic injunctions against rogue websites and directions to marketplaces and domain registrars.
Procedure
Suits are filed under the Commercial Courts Act and heard by the IP Division. Where urgent interim relief is sought, pre-institution mediation is not required. A Local Commissioner can be appointed to seize infringing stock on the first date.
Frequently asked questions
Can I sue in Delhi if the infringer is in another state?
Yes, if you carry on business in Delhi (Section 134 of the Act) or if the infringing goods are sold or advertised in Delhi, including online.
What is a well-known trademark?
A mark recognised by a substantial segment of the public such that its use on unrelated goods would suggest a connection. Well-known marks are protected across all classes, and can be declared as such by the Registry.
How long does an infringement suit take?
Interim injunction within days to weeks; final decision one to three years in the IP Division, with many cases settling after the interim stage.
Related practice area: Intellectual Property
This article is for general information and does not constitute legal advice. Laws, rules and limitation periods change and depend on the facts; please take advice on your own situation before acting. Reading this article does not create a lawyer-client relationship with Akhtars Legalitarian.