Legal Standing in Trademark Infringement Cases: Who Can Sue?

When someone misuses your brand – using a similar logo, copying a product name, or riding on your reputation – the first question that arises is: who actually has the legal right to drag them to court? In Indian trademark law, this question has a precise answer. The Trade Marks Act, 1999 clearly defines who holds the locus standi (legal standing) to sue for trademark infringement – and getting this wrong can get your case thrown out before it even begins.

Why legal standing matters in a trademark lawsuit 🔗

Not everyone who feels aggrieved by a trademark violation can run to court. Indian law requires that the person initiating the suit must have a legally recognized interest in the trademark. This principle keeps litigation focused and prevents third parties with no real stake in the mark from flooding courts with infringement suits. Section 134 of the Trade Marks Act, 1999 specifies that suits for infringement must be filed in a court not inferior to a District Court – which already signals the seriousness with which trademark disputes are treated. High Courts with original civil jurisdiction, such as the Delhi High Court and Bombay High Court, also regularly hear such matters.

The registered proprietor: the primary right-holder 🔗

The most straightforward answer to “who can sue” is the registered proprietor of the trademark. Under Section 28(1) of the Trade Marks Act, 1999, registration grants the proprietor the exclusive right to use the mark in relation to the goods or services for which it is registered – and the corresponding right to obtain relief when that exclusivity is violated.

This means the registered proprietor can file a civil suit seeking an injunction, damages, or an account of profits against anyone using an identical or deceptively similar mark without authorization. Importantly, even a foreign proprietor whose trademark is registered in India can sue for infringement before Indian courts, making the protection genuinely territorial rather than just national in character.

Heirs and legal representatives 🔗

Trademark rights do not die with their owner. When a registered proprietor passes away, their rights in the trademark – including the right to sue for infringement – pass to their heirs or legal representatives. This follows the general principle of succession under Indian law, and the Trade Marks Act does not carve out any exception to it. The trademark, treated as a business asset, can be inherited, and those who inherit it step into the shoes of the original proprietor for all enforcement purposes.

The assignee: rights follow the trademark 🔗

Trademarks in India can be assigned – that is, transferred from one party to another, either with or without the goodwill of the business. Once a trademark is validly assigned and the assignment is recorded with the Trade Marks Registry under Section 45 of the Act, the assignee becomes the new registered proprietor and inherits all accompanying rights, including the right to sue for infringement.

There is an important procedural caveat here: until the assignment is formally recorded with the Registry, the original proprietor continues to hold enforcement rights. An unrecorded assignment does not automatically transfer the right to litigate. This makes timely registration of the assignment a critical step for any assignee who wants full legal protection.

The registered user: a carefully defined category 🔗

Indian trademark law draws a sharp and consequential distinction between a registered user and a permitted user. Understanding this difference is essential – it determines whether a licensee can sue for infringement independently.

Who is a registered user? 🔗

A registered user is a person who has been formally registered with the Trade Marks Registry as an authorized user of the trademark. This registration is governed by Chapter VI of the Trade Marks Act and involves an agreement between the proprietor and the user that is recorded officially. The registered user’s relationship with the mark has statutory recognition.

Right to sue under Section 52 🔗

Under Section 52 of the Trade Marks Act, 1999, a registered user may institute infringement proceedings in their own name, as if they were the registered proprietor. The section allows the registered user to make the registered proprietor a defendant in the proceedings – a unique provision that ensures the suit can proceed even if the proprietor is unwilling or unable to act.

The Mondaq analysis of the Himalaya Drug case illustrates this well: the court allowed a registered user to initiate infringement proceedings against the proprietor when the proprietor had refused or neglected to use the mark for three months. The rights of the registered user in such proceedings run concurrently with those of the proprietor, and critically, the proprietor added as defendant is not liable for costs unless they actively participate in the proceedings.

Additionally, under Section 136, when legal action is brought by or against the proprietor, a registered user can be statutorily impleaded as a party – ensuring they have the opportunity to be heard in matters that directly affect their licensed rights.

Who cannot sue: the permitted user 🔗

This is where many get tripped up. A permitted user – someone who uses the trademark under the proprietor’s consent or a common-law licence, without formal registration with the Registry – does not have the right to sue for infringement. Section 53 of the Trade Marks Act expressly bars permitted users from initiating infringement proceedings.

The Delhi High Court has firmly upheld this position. In one significant ruling, the court set aside a lower court’s decision and rejected the participation of a permitted user as plaintiff in an infringement suit, holding that only the registered proprietor or registered user can bring such a suit. The court reasoned that allowing Section 134(2) to override the explicit prohibition in Section 53 would create an internal contradiction in the statute – one that Parliament clearly did not intend.

A permitted user’s recourse, if any, is limited to a passing off action – a common law remedy that requires proving goodwill, misrepresentation, and damage. This is a harder standard to meet than a statutory infringement suit, and it further underscores why formal registration as a user carries real legal value.

Unregistered trademark owners: no infringement suit, but passing off remains 🔗

Section 27 of the Trade Marks Act, 1999 is unambiguous: no person is entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trademark. If your mark is not registered, you simply cannot file an infringement suit under the Act.

However, the Act preserves the common law right to sue for passing off. An unregistered mark owner who can demonstrate substantial goodwill, consumer confusion caused by the defendant’s misrepresentation, and resulting damage can still seek relief – just through a different legal route. This is particularly relevant for regional brands and businesses that have built a strong market reputation without having gone through formal registration.

The court in which the suit must be filed 🔗

Legal standing is only one part of the equation – the suit must also be filed before the right court. Section 134 of the Trade Marks Act specifies that infringement suits must be instituted before a District Court or a High Court having ordinary original civil jurisdiction. The Supreme Court of India, in India Performing Rights Society Ltd. v. Sanjay Dalia, clarified the jurisdictional nuances under this provision – particularly around the role of branch offices in determining where a suit can be filed. The cause of action remains the most critical factor in deciding territorial jurisdiction.

A quick summary of who can sue 🔗

To put it plainly: the registered proprietor, their heirs or legal representatives, a validly recorded assignee, and a registered user all have the standing to sue for trademark infringement under Indian law. A permitted user and an unregistered trademark owner do not – at least not for a statutory infringement claim. The law draws these lines deliberately, to ensure that enforcement rights stay with those who have made the commitment of formal registration.

For anyone dealing in brand-heavy businesses – whether as a founder, franchisee, or investor – understanding these distinctions is not just academic. It shapes how you structure your licensing agreements, whether you register your user status, and how quickly you record any assignment of trademark rights. The right to sue is only meaningful if you are legally positioned to exercise it.

What do you think? If a registered user and the proprietor both want to sue an infringer, but their interests conflict, who should have priority in the proceedings? And should permitted users – who often have a significant commercial stake in a brand – be given limited statutory standing to sue, even if registration remains the gold standard for enforcement?

References

1. https://www.ipindia.gov.in/writereaddata/Portal/ev/TM-ACT-1999.html
2. https://ssrana.in/litigation/ip-litigation/trademark-litigation/
3. https://indiankanoon.org/doc/84096/
4. https://finlawassociates.com/blog/who-can-sue-for-infringement-of-trademark-a-legal-perspective-in-india
5. https://www.iplaw.in/section-52-right-of-registered-user-to-take-proceedings-against-infringement/
6. https://www.mondaq.com/india/trademark/1408904/the-dichotomy-of-registered-and-permitted-users-under-the-trade-marks-act-1999
7. https://www.lakshmisri.com/newsroom/news-briefings/trademarks-permitted-user-cannot-institute-an-infringement-suit/