Trademark Litigation

Trademark Litigation In India
(Price Start at $ 90 /-)

In today's world, trademarks are considered as valuable assets for individuals and companies. However, unauthorized use of the marks can significantly harm its value and reputation. In order to protect their rights over such marks, trademark owners have the option to send them a legal notice to the infringer, asking them to cease the unauthorized and illegal use of the mark. If the infringement continues, trademark litigation sometimes becomes necessary.


What is the Purpose of Trademark Litigation In India?

Trademark Litigation has several key objectives, few of which are mentioned below:

  • It prevents all sorts of unauthorized use of the registered trademark or unregistered trademark within the commercial space.
  • It prevents all sorts of unauthorized use of the registered trademark or unregistered trademark within the commercial space.
  • Trademark litigation helps the proprietors of the mark to get an injunction order in their favour and enable them to pursue legal recourse against infringers.
  • The Court also awards compensation to the proprietor of the mark regarding the damages caused to him on account of infringement of its trademark.
  • It also safeguards and promotes the available legal rights of the trademark owners.

What are the Documents/compliances required for trademark litigation in India?

In order to file a Trademark infringement/passing-off suit, the rules prescribed for commercial disputes under the Commercial Courts Act 2015 will be applicable. Accordingly, all relevant documents (including the details of the parties involved, trademark registration certificates, Legal proceeding certificates, financial statements etc.) need to be filed along with the claim at the time of filing of the suit. In nay case, additional documents can also be submitted to the Court within 30 days from the date of the filing of the suit. It is also to be noted that if any documents which are not filed at this stage cannot be relied upon at a later stage unless the Court itself grants specific permission to this effect or sought for production of such documents.

Regarding the compliances, the grant or refusal of a temporary injunction is essentially covered by three well-established principles in each case:

  • Whether the plaintiff has made out a prima facie case;
  • whether the balance of convenience is in their favour (ie, whether it could cause greater inconvenience to them if the injunction is not granted than the inconvenience that the opposite party would be put to if it is granted); and
  • whether the plaintiff would suffer irreparable loss or injury.

It is pertinent to note that the condition of existence of a prima facie case is essential for the grant of an injunction, while the other two conditions can be satisfied by the plaintiff at a later stage. The Courts may also take into account the public interest when granting or refusing a request for the grant of a preliminary injunction.

What is the Procedure to be followed for trademark litigation in India?

Anyone who is aggrieved by the misuse or misrepresentation of its registered/unregistered trademark can file a suit for trademark infringement/passing-off before the appropriate courts. Section 135 of the Trademarks Act provides civil remedies such as injunctions, delivery up, and profit of accounts. It is worth mentioning that only District Courts and High Courts in India have the powers where such lawsuits for infringement and passing off, among other allegations, can be filed.

The stage-wise procedure of Trademark litigation is discussed below:

  • Step 1: Suit against Infringement/Passing-off: The first step in case of an infringement/passing-off of a trademark is to file a lawsuit, before the appropriate court/jurisdiction, against the infringing entity who is unauthorizedly and illegally using the mark. The such for infringement/passing-off must contain all the important facts and data of your case.

  • Step 2: Court Fee: The applicable court fee must be submitted before the next date of hearing.

  • Step 3: Hearing: Upon the institution of the suit, the judge first observes the suit and issues notice to the opposite party for a second hearing after verifying all the details and documentation filed along with the suit. In case the plaintiff has asked for an exemption of an advance copy of the service, the suit will be processed, and an ex-parte order may be issued during the first hearing itself. .

  • Step 4: Injunction Order: In the second hearing, both parties will have to contest their case and provide suitable arguments and proof supporting their claims. If the court is satisfied with its arguments, it may issue an order for a temporary injunction or proceed further as per the rules by giving a date for the next hearing in the court.

 Penalties and Reliefs in Trademark Infringement Cases

While filing a suit for Trademark infringement in India, the Plaintiff can seek various reliefs from the aggrieved party as part of the prayer. Previously, the Courts were only granting temporary or permanent injunctions, damages, costs of litigation, accounts of profits, and the destruction of infringing goods in cases of trademark infringement and passing off. However, the time has been changed and certain additional remedies are now being provided to protect the rights of the trademark owners, such remedies include:

  • Anton Piller Injunction: In order to collect evidence and other information, this order grants the plaintiff a right to conduct a surprise search and seizure on the premises of the infringing party.

  • John Doe Orders: There are instances when the details of the infringing parties are not available, in such case, the John Doe order allows the Plaintiff to take action against such unidentified infringing parties.

  • Punitive Damages In order to deter future infringements, the Court awards punitive damages in cases of deliberate and malicious infringement.


How can seedling help you with Trademark Litigation in India?

At Seedling Associates, we excel in crafting and implementing comprehensive trademark litigation strategies and provide assistance to clients at every stage. Our team regularly and proactively monitors the market and ensures vigilance of the highest form to help maintain the exclusivity of your mark. We formulate effective strategies to deal with any marks that subsequently come into being, and can adeptly handle any litigation proceedings as and when such assistance is required. Upholding your mark and its exclusivity will be our utmost concern, and any and all challenges to the same will be identified and removed meticulously.

Most common question about our services

What is the limitation for instituting a trademark suit/litigation?

In case of infringement of a trademark/passing off, the period of limitation for filing a suit is three years from the date of such infringement/passing off.


Who can sue for infringement of trademark?

In general, the registered proprietor of any trademark has the exclusive rights to initiate infringement proceedings before any appropriate court. However, such right for initiating infringement proceedings can also be given to the registered user of any trademark.


Who has the burden of proof in a trademark infringement case?

The burden of proof is mostly on the Plaintiff to show its trademark reputation in India including the unauthorized use of the mark by the defendant and that by using the mark without cause, the Defendant took unfair advantage.


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