Exploring Remedies Available for Trademark Infringement

When a registered trademark is used without authorization, the owner does not have to simply absorb the loss. The Trade Marks Act, 1999 equips trademark owners with a robust set of legal tools to fight back – spanning civil courts, criminal prosecution, and administrative channels. Understanding these remedies is essential not just for enforcing rights, but also for appreciating how seriously Indian law treats the integrity of registered marks in the marketplace.

Why remedies matter in trademark law 🔗

A trademark is more than a logo or a name – it is a business’s identity and a consumer’s assurance of quality. When someone infringes on that mark, the damage is twofold: the owner suffers financial loss and reputational harm, while consumers are misled into buying goods or services they did not intend to. Remedies under the Trade Marks Act, 1999 exist to correct both wrongs – they compensate the owner and deter future infringers. The Act aligns with international standards under the TRIPS Agreement, ensuring that protection of trademarks in India meets global expectations.

Civil remedies under the Trade Marks Act, 1999 🔗

Civil remedies are the most commonly pursued route in trademark infringement cases. A suit for infringement is filed before a District Court or High Court under Section 134 of the Trade Marks Act, 1999, and the reliefs available are set out under Section 135. These reliefs are designed to be both preventive and compensatory.

Injunctions 🔗

An injunction is a court order directing the infringer to stop using the registered trademark. It is typically the first and most urgent relief sought. Courts can grant two types of injunctions – temporary injunctions, which operate for a limited period or until further orders of the court and can be granted at any stage of the proceedings, and perpetual (permanent) injunctions, which are granted upon the final decree of the suit and operate indefinitely.

The temporary injunction is particularly critical. Unless it is granted, the infringer can continue using the mark while the suit is pending – which defeats the very purpose of approaching the court in the first place. Section 135(2) further allows the court to pass ex parte injunctions, meaning orders granted without hearing the defendant, in situations of extreme urgency. This sub-section also empowers courts to issue interlocutory orders for: discovery of documents relevant to the suit; preservation of infringing goods and other evidence; and restraining the defendant from disposing of assets in a way that could affect the plaintiff’s ability to recover compensation.

Damages or account of profits 🔗

Under Section 135(1), the plaintiff has the option of claiming either damages or an account of profits – but not both simultaneously. Damages are monetary compensation awarded to the plaintiff for the losses suffered as a direct consequence of the infringement. An account of profits, on the other hand, is an equitable remedy: it requires the defendant to hand over the actual profits made through the infringing activity to the plaintiff. The choice between the two depends on which calculation works better in favour of the trademark owner – sometimes the infringer’s profits exceed the owner’s provable losses.

However, Section 135(3) carves out situations where a court will not award damages beyond nominal amounts or order an account of profits. These include cases involving certification trademarks or collective marks, and situations where the defendant can prove that at the time of infringement they were genuinely unaware of the plaintiff’s registered mark and, upon becoming aware, immediately ceased all infringing use. This provision protects innocent infringers, but the burden of proof lies squarely on the defendant.

Delivery up and destruction of infringing goods 🔗

In addition to injunctions and monetary relief, courts can order the delivery up of infringing labels, packaging, and goods for destruction or erasure. This ensures that fake or counterfeit products bearing the registered mark are physically removed from circulation. Courts can also appoint a local commissioner – similar to an Anton Piller order in common law jurisdictions – to conduct searches, seize infringing goods, preserve account books, and prepare an inventory. This is a powerful procedural tool, as it prevents the infringer from destroying evidence or moving infringing stock before the suit is decided.

Section 135 also prevents the defendant from taking assets outside the court’s jurisdiction, thereby protecting the plaintiff’s ability to eventually recover whatever the court may finally award.

Criminal remedies under the Trade Marks Act, 1999 🔗

Trademark infringement is not merely a civil wrong in India – it is also a criminal offence. The infringement of a trademark is a cognizable offence, which means the police have the authority to arrest the accused and initiate action without first obtaining a warrant, subject to the prescribed procedural conditions.

Penalties under Section 103 🔗

Section 103 of the Trade Marks Act, 1999 deals with the penalty for falsifying a trademark or falsely applying a registered trademark to goods or services without authorization. A person convicted under this section faces imprisonment of not less than six months, extendable up to three years, along with a fine ranging from ₹50,000 to ₹2,00,000. These are mandatory minimums – the courts have limited discretion to go below these thresholds unless adequate and special reasons are recorded in the judgment.

Penalties under Section 104 🔗

Section 104 targets those who sell, stock, or distribute goods knowing that a false trademark has been applied to them. The penalties mirror those under Section 103 – imprisonment between six months and three years and a fine between ₹50,000 and ₹2,00,000. This provision is significant because it extends criminal liability beyond the person who falsifies the mark to those in the supply chain who knowingly deal in the infringing goods.

How criminal complaints are initiated 🔗

Criminal complaints under the Act are filed before a Magistrate’s court. The Magistrate can then direct the police to investigate and conduct raids. Alternatively, a direct complaint can be filed before the police under Section 115(4) of the Trade Marks Act, but only with an officer of the rank of Deputy Superintendent of Police (DSP) or Assistant Commissioner of Police (ACP). Before taking action, the concerned officer is required to seek an opinion from the Registrar of Trademarks, adding an expert checkpoint to the process.

Since the offences under the Act are cognizable, the police are empowered to arrest accused persons during raids without prior court approval, making criminal prosecution a potent deterrent against large-scale counterfeiting operations.

Administrative remedies 🔗

Beyond the courts, there is a third channel – administrative remedies – that trademark owners can use, particularly to prevent future infringement rather than address one that has already occurred. If a trademark is wrongly registered or a deceptively similar mark has entered the register, any aggrieved party can apply for rectification or cancellation of the registered trademark before the Trademark Registry or the Intellectual Property Appellate Board (IPAB). An opposition can also be filed within four months of a trademark’s publication in the Trade Marks Journal, stopping a conflicting mark before it gets registered.

Additionally, customs authorities play a role: the import and export of goods bearing a fraudulent or infringing trademark can be intercepted and restricted. This is particularly relevant in cases involving counterfeit goods being brought into or shipped out of India through ports and airports.

Passing off: protection for unregistered marks 🔗

It is worth noting that civil remedies are not confined to registered trademark owners. Indian law recognizes passing off as a common law remedy for owners of unregistered trademarks. Where a person misrepresents their goods or services as those of another, causing harm to the goodwill of the original trader, an action in passing off can be brought. Section 27 of the Trade Marks Act, 1999 specifically preserves the right of an unregistered trademark owner to sue for passing off, ensuring that even those who have not formally registered their marks are not left without legal protection.

Choosing the right remedy 🔗

In practice, trademark owners often pursue civil and criminal remedies simultaneously. Civil suits focus on stopping the infringement and recovering losses, while criminal complaints put pressure on the infringer through the prospect of jail time and fines. The choice of remedy – or combination of remedies – depends on the nature of the infringement, the scale of the violation, the available evidence, and the outcome the brand owner is seeking. A proactive and multi-pronged enforcement strategy is generally the most effective way to protect a trademark and maintain its value and distinctiveness in the market.

What do you think? If a small business owner discovers a competitor is selling nearly identical products under a confusingly similar brand name, which remedy – civil, criminal, or administrative – should they prioritize first, and why? And should courts make it easier or harder for defendants to claim the “innocent infringer” defence under Section 135(3) to avoid paying damages?

References

1. https://ssrana.in/ip-laws/trademarks-in-india/trademark-misuse-infringement-india/
2. https://depenning.com/blog/trademark-enforcement-strategies/
3. https://indiankanoon.org/doc/114856/
4. https://kanalysis.com/civil-criminal-remedies-trademark-infringement/
5. https://www.indianconstitution.in/2022/01/section-135-trade-marks-act-1999.html
6. https://cleartax.in/s/trademark-infringement-india
7. https://www.jainandpartners.com/blog/details/article-on-trademark-infringement/27
8. https://blog.kanalysis.com/civil-and-criminal-remedies-trademark-infringement-passing-off/
9. https://www.indialawoffices.com/legal-articles/infringement-passing-off-indian-trademarks-act