Open Access Research Article
White Black Legal – International Law Journal · ISSN 2581-8503
A STUDY ON LEGAL REMEDIES FOR THE INFRINGEMENT OF REGISTERED TRADEMARKS IN INDIA
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Abstract
A STUDY ON LEGAL REMEDIES FOR THE
INFRINGEMENT OF REGISTERED TRADEMARKS IN INDIA
AUTHORED BY - C. ISWARYA
ABSTRACT
This
article evaluates the legal remedies available in India for infringement of
registered trademarks under the Trade Marks Act, 1999, allied procedural
statutes and evolving case law. It examines the civil, criminal and
administrative tracks, together with border enforcement, and tests them against
contemporary challenges such as e-commerce counterfeiting and cross-border
trade. The analysis finds that civil remedies under Sections 134 and 135,
reinforced by judicial innovations including interim injunctions, Anton Piller
orders, John Doe orders and punitive damages, remain the most effective avenue
for registered proprietors. Criminal enforcement under Chapter XII is
under-utilised, partly because Section 115(4) requires police to obtain the
Registrar's opinion. The abolition of the Intellectual Property Appellate Board
in 2021 has created institutional uncertainty in cancellation and
rectification, and border enforcement remains constrained by recordation and
resourcing hurdles. Comparison with the TRIPS Agreement, the US Lanham Act and
the UK Intellectual Property Enterprise Court suggests that India's enforcement
deficit lies in institutional and procedural implementation rather than in the
statutory text. The article proposes codified statutory damages, police
training, dedicated High Court intellectual property divisions and a
capped-cost track for MSMEs.
Keywords
– Trademark
Infringement; Registered Trademarks; Trade Marks Act, 1999; Civil Remedies;
Injunction; Damages; Account of Profits; Punitive Damages; Anton Piller Order;
John Doe Order; Criminal Remedies; Chapter XII; Intellectual Property Appellate
Board; Border Enforcement; Customs; Intermediary Liability; E-Commerce;
Deceptive Similarity; TRIPS; Comparative Study.
I.
INTRODUCTION
A
trademark is a badge of commercial origin. It lets consumers distinguish the
goods or services of one trader from another's, and it lets a trader who has
built goodwill under a mark prevent others from appropriating it. In an economy
that is digitising its retail channels and integrating with global trade, the
trademark has become a central item of intangible property for enterprises of
every size. Registration under the Trade Marks Act, 1999 gives the proprietor
the exclusive right to use the mark and the right to seek relief for
infringement. Infringement strikes at consumer confidence, erodes
distinctiveness and, in the case of counterfeit goods, can endanger public
health, most visibly in the pharmaceutical and food sectors.
A
substantive right has limited value unless it is backed by effective,
accessible and proportionate remedies. India's regime, governed principally by
the Trade Marks Act, 1999 read with the Trade Marks Rules, 2017, the Code of
Civil Procedure, 1908, the Specific Relief Act, 1963 and the Commercial Courts
Act, 2015, offers civil, criminal and administrative remedies, supplemented by
border measures under the Customs Act, 1962. The regime has a long lineage: the
first dedicated statute, the Trade Marks Act, 1940, was modelled closely on the
United Kingdom's Trade Marks Act, 1938. Yet proprietors still face real
obstacles. Civil suits are protracted, criminal provisions are invoked
inconsistently, and the abolition of the Intellectual Property Appellate Board
(IPAB) in 2021 has unsettled administrative remedies, while none of the three
tracks was designed with online, cross-border and marketplace-mediated
infringement in mind.
This
article asks how far India's remedies are adequate to protect registered
proprietors. It advances the hypothesis that India's remedial architecture is
formally robust and TRIPS-compliant, but that its practical efficacy is
diminished by procedural delay, inconsistent use of criminal provisions,
institutional gaps after the abolition of the IPAB, and the absence of
provisions tailored to digital and cross-border infringement. It further
hypothesises that targeted legislative and institutional reform, rather than
wholesale redrafting, can substantially improve outcomes. The analysis uses two
conceptual frames: the consumer-protection rationale, under which trademark law
shields the public from confusion and deception, and the property-rights
rationale, under which it protects the proprietor's investment in goodwill.
The
study is doctrinal and analytical. It relies on the statutes and rules named
above, the Intellectual Property Rights (Imported Goods) Enforcement Rules,
2007, reported judgments of the Supreme Court and the High Courts, and the
leading secondary literature. It draws on no empirical data on disposal times
or enforcement statistics, so its conclusions on practical efficacy rest on
structural reasoning and the literature reviewed. Part II outlines the
statutory framework; Part III examines civil remedies; Part IV covers criminal,
administrative and border remedies; Part V analyses judicial trends; Part VI
offers a comparative perspective; Part VII evaluates the framework critically;
and Part VIII proposes reforms and concludes.
II. STATUTORY FRAMEWORK OF
INFRINGEMENT
2.1
RIGHTS CONFERRED AND THE DEFINITION OF INFRINGEMENT
Section
28(1) is the foundational provision conferring substantive rights on the
registered proprietor: it grants the exclusive right to the use of the
trademark in relation to the goods or services in respect of which it is
registered, and the right to obtain relief in respect of infringement of the
trademark in the manner provided by the Act.[1] It
is this statutory right of relief that anchors every remedy discussed in the
subsequent parts of this study; the remedies available under Sections 134 and
135 are not free-standing but flow directly from the right conferred by Section
28(1).
Section
29 of the Trade Marks Act, 1999 is the operative provision defining what
amounts to infringement of a registered trademark, and its nine sub-sections
between them cover a wide spectrum of infringing conduct.[2]
Section 29(1) provides that a registered trademark is infringed when a person,
not being a registered proprietor or a permitted user, uses in the course of
trade a mark which is identical with, or deceptively similar to, the registered
mark in relation to the goods or services for which it is registered, in such a
manner as to render the use likely to be taken as being use as a trademark.[3]
Section
29(2) extends protection to cases involving similar, though not identical,
marks and similar goods or services, where the resemblance is likely to cause
confusion on the part of the public, including a likelihood of association with
the registered mark.[4]
Section 29(3) creates a presumption of likelihood of confusion where the mark
and the goods or services are both identical to the registered mark and its
specification, relieving the plaintiff of the burden of independently proving
confusion in such cases.[5]
Section 29(4) provides an anti-dilution remedy available to marks having a
reputation in India, permitting an infringement action even where the goods or
services are dissimilar, provided the use of the mark without due cause takes
unfair advantage of, or is detrimental to, the distinctive character or repute
of the registered mark.[6]
2.2
PASSING OFF
Section
27(1) of the Act expressly denies a statutory right of action for infringement
in respect of an unregistered trademark, but Section 27(2) equally expressly
preserves the common-law right of action against any person for passing off
goods or services as those of another, and the remedies available in respect
thereof.[7]
Although the present study is confined to registered trademarks, the continued
vitality of passing off is significant for two reasons germane to this study:
first, a registered proprietor frequently combines a statutory infringement
claim with a common-law passing off claim in the same suit, since the latter
allows recovery even where a defect in registration is later discovered; and
second, the doctrinal tests developed in passing off litigation, particularly
the classical trinity of goodwill, misrepresentation, and damage, have
substantially influenced the judicial elaboration of the deceptive similarity
standard under Section 29, as discussed in Part V.
III. CIVIL REMEDIES
3.1
JURISDICTION
Section
134 of the Trade Marks Act, 1999 confers jurisdiction to entertain a suit for
infringement, or a suit in which relief for infringement and passing off are
combined, exclusively upon a District Court, which, under the Commercial Courts
Act, 2015, in practice translates to the Commercial Court or the Commercial
Division of the High Court where the specified value of the suit exceeds the
prescribed threshold.[8] A
distinctive feature of Section 134(2) is that it permits the plaintiff to
institute the suit in the court within whose local limits the plaintiff
actually and voluntarily resides, or carries on business, or personally works
for gain, irrespective of the place where the defendant resides or the cause of
action arose, in effect displacing the ordinary rule under Section 20 of the
Code of Civil Procedure, 1908.[9]
This plaintiff-friendly jurisdictional rule was designed to reduce the
litigation burden on registered proprietors, who are often unwilling to travel
to the defendant's forum, particularly in cases of large-scale, geographically
dispersed counterfeiting.
3.2
INJUNCTIVE RELIEF
Interim
or interlocutory injunctions, sought pending final disposal of the suit, are
governed procedurally by Order XXXIX, Rules 1 and 2 of the Code of Civil
Procedure, 1908, read with the court's inherent powers under Section 151 of the
Code, and substantively by the principles under Sections 36 to 42 of the
Specific Relief Act, 1963.[10]
Indian courts have consistently applied the three-fold test of prima facie
case, balance of convenience, and irreparable injury in determining whether to
grant an interim injunction in a trademark suit, and, given the urgency
typically involved, applications are frequently granted ex parte, that is,
without notice to the defendant, particularly where delay in granting relief
would allow the infringing goods to be dispersed into the market or the
evidence to be destroyed.[11]
An ex parte interim injunction, however, is granted only for a limited period
and is invariably subject to the plaintiff's duty of full and honest disclosure
of all material facts to the court.
3.3
DAMAGES AND ACCOUNT OF PROFITS
Section
135(1) permits the court to award, at the plaintiff's election, either damages
or an account of profits, these being mutually exclusive and alternative
remedies rather than cumulative ones, since to award both would amount to
double recovery for the same wrong. Damages compensate the plaintiff for the
actual loss suffered as a consequence of the infringement, typically measured
by reference to lost sales or diminished licensing revenue, whereas an account
of profits requires the defendant to disgorge the profits actually made from
the infringing use, on the equitable rationale that the defendant ought not to
be permitted to retain a gain wrongfully derived from the plaintiff's mark. In
practice, plaintiffs frequently opt for damages, since proving the defendant's
profits requires discovery of the defendant's accounts and can be a more
onerous and time-consuming exercise, whereas an assessment of damages permits a
degree of judicial estimation where precise proof is unavailable.
A
significant judicial development has been the willingness of Indian courts,
notwithstanding the absence of an express statutory basis, to award punitive or
exemplary damages in trademark infringement suits, particularly where the
defendant has failed to appear or contest the suit despite due service, treated
by courts as indicative of a deliberate and continuing infringement warranting
deterrent damages over and above compensatory damages.[12]
This trend, examined further in Part V, represents a judicially innovated
supplement to the statutory remedy of damages under Section 135, and its
doctrinal basis and consistency across different High Courts remain a live
issue for the study's evaluative analysis in Parts VII and VIII.
3.4
ANTON PILLER AND JOHN DOE ORDERS
Indian
courts, drawing upon English equitable practice, have also developed the
practice of granting Anton Piller orders, which are search-and-seizure orders
permitting the plaintiff's representatives, accompanied by a court
commissioner, to enter the defendant's premises to inspect, document, and
secure evidence of infringing activity before the defendant has an opportunity
to destroy or conceal it.[13]
Complementing this, in cases of large-scale or anonymous infringement, most
notably counterfeiting operations conducted through numerous unidentified
traders or online sellers, Indian courts have granted so-called "John
Doe" or "Ashok Kumar" orders, being injunctions issued against
unnamed and unidentified defendants, which are then enforced against any person
subsequently discovered to be engaged in the infringing conduct.
IV. CRIMINAL, ADMINISTRATIVE AND
BORDER REMEDIES
4.1
CRIMINAL OFFENCES UNDER CHAPTER XII
Chapter
XII of the Trade Marks Act, 1999, comprising Sections 101 to 121, creates a set
of criminal offences that operate as a parallel and cumulative track alongside
civil remedies. Section 101 defines when a trademark or trade description is
deemed to be "falsely applied" or a false trade description is deemed
to be "applied" to goods, this definitional provision underpinning
the substantive offences that follow.[14]
Section 103 penalises the falsification of a trademark, the false application
of a trademark to goods or services, the making or possession of instruments
for falsifying a trademark, and the application of a false trade description,
prescribing a minimum sentence of six months' imprisonment extending up to
three years, together with a fine of not less than fifty thousand rupees which
may extend to two lakh rupees.[15]
Section
115(4) is of particular practical significance: it renders offences under
Sections 103, 104, and 105 cognizable, empowering any police officer not below
the rank of Deputy Superintendent of Police to search premises and seize
infringing goods without a warrant, provided the officer first obtains the
opinion of the Registrar of Trade Marks on facts involved in the alleged
offence and is bound by that opinion in deciding whether or not the article in
question constitutes a false trademark.[16]
This requirement of obtaining the Registrar's opinion, intended as a safeguard
against frivolous or mistaken criminal proceedings, has in practice also been
identified as a source of delay and unfamiliarity that discourages police
officers from readily invoking the cognizable-offence machinery, a point taken
up further in Parts VII and VIII.
Although
the criminal remedy is, on paper, a potent deterrent, given that it does not
require the proprietor to bear the cost and delay of a civil suit and instead
invokes the machinery of the State, its practical invocation in India has
historically been inconsistent. Police stations frequently lack specialised
knowledge of intellectual property statutes, treating counterfeiting complaints
as a low priority relative to conventional crime, and the statutory requirement
of obtaining the Registrar's opinion before undertaking a search or seizure
introduces a procedural step that many investigating officers are unfamiliar
with or reluctant to pursue. As a consequence, registered proprietors,
particularly larger corporate entities, have tended to rely on privately
organised raids conducted with the assistance of local commissioners appointed
by civil courts, as described in Part III, rather than on the criminal process,
notwithstanding that the criminal process alone carries the deterrent value of
custodial punishment.
4.2
ADMINISTRATIVE REMEDIES AFTER THE IPAB
Prior
to 2021, appeals from orders of the Registrar in opposition and rectification
proceedings, as well as original rectification petitions in certain
circumstances, lay to the Intellectual Property Appellate Board, a specialised
tribunal established in 2003 with both judicial and technical members possessed
of subject-matter expertise.[17]
The Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance,
2021, subsequently enacted as the Tribunals Reforms Act, 2021, abolished the
IPAB with effect from 4 April 2021, on the stated ground that the Board had not
achieved its objective of speedier and less expensive adjudication, and
transferred its pending matters and future jurisdiction to the respective High
Courts, with rectification petitions and appeals from the Registrar now being
maintainable before the High Court exercising jurisdiction, generally through
its Commercial Division under the Commercial Courts Act, 2015 where applicable.[18]
4.3
BORDER ENFORCEMENT
Recognising
that a substantial proportion of counterfeit goods enter the domestic market
through importation, Section 11 of the Customs Act, 1962 empowers the Central
Government to prohibit the import or export of goods for the protection of,
among other things, trademarks, and the Intellectual Property Rights (Imported
Goods) Enforcement Rules, 2007, framed thereunder, establish a mechanism by
which a registered proprietor may record its trademark with Indian Customs,
enabling customs officers to suspend the clearance of suspected infringing
goods at the point of entry and to notify the rights holder for confirmation
before the goods are released or destroyed.[19]
V. JUDICIAL TRENDS
5.1
THE TEST FOR DECEPTIVE SIMILARITY
The
foundational modern authority on the test for deceptive similarity is Amritdhara
Pharmacy v. Satya Deo Gupta, in which the Supreme Court, comparing the
marks "Amritdhara" and "Lakshmandhara" for medicinal
preparations, held that the marks must be judged by their overall structural
and phonetic similarity, and by the impression such marks leave on the mind of
a person of average intelligence and imperfect recollection, rather than by
placing the marks side by side and comparing them syllable by syllable.[20]
This "average consumer with imperfect recollection" standard has
remained the touchstone of Indian trademark infringement analysis for over six
decades.
The
most detailed elaboration of the deceptive similarity test came in Cadila
Health Care Ltd. v. Cadila Pharmaceuticals Ltd., where the Supreme Court,
adjudicating a dispute between two pharmaceutical companies over the marks
"Falcigo" and "Falcitab" for anti-malarial drugs, laid down
a comprehensive, non-exhaustive list of factors to be weighed in assessing
deceptive similarity, including the nature of the marks, the degree of
resemblance, the nature of the goods, the similarity in the nature, character, and
performance of the goods of the rival traders, the class of purchasers likely
to buy the goods, the mode of purchasing, and any other surrounding
circumstances.[21] Significantly, the Court
held that in the case of medicinal products, an even stricter standard of
scrutiny is warranted, since confusion between pharmaceutical products carries
the risk of serious, even fatal, harm to public health, a consideration that
has since guided courts to apply heightened caution in pharmaceutical trademark
disputes.[22]
5.2
TRANSBORDER REPUTATION
A
distinctive contribution of Indian jurisprudence to global trademark doctrine
has been the recognition of transborder reputation, under which a mark may be
protected in India even though its proprietor has not commenced actual use or
sale of goods within Indian territory, provided its reputation has, through
advertising, media exposure, or the mobility of international consumers,
spilled over into India. In N.R. Dongre v. Whirlpool Corporation, the
Delhi High Court, in a decision affirmed by the Supreme Court, restrained an
Indian company from using the mark "Whirlpool" for washing machines,
holding that Whirlpool Corporation's reputation as a manufacturer of washing
machines had reached India through advance publicity and international magazine
advertisements notwithstanding that Whirlpool products were not, at the
relevant time, being sold in the Indian market.[23]
5.3
PUNITIVE DAMAGES
As
noted in Part III, the Trade Marks Act, 1999 does not expressly provide for
punitive or exemplary damages, Section 135 speaking only of damages and account
of profits. Nonetheless, in Time Incorporated v. Lokesh Srivastava, the
Delhi High Court awarded punitive damages of five lakh rupees, over and above
compensatory damages of five lakh rupees, against a defendant who had infringed
the plaintiff's "TIME" trademark and had failed to appear and contest
the suit, the Court reasoning that punitive damages serve a necessary deterrent
function, since compensatory damages alone often amount to no more than a
licence fee for continued infringement, leaving unscrupulous infringers
undeterred.[24]
5.4
E-COMMERCE INFRINGEMENT
The
growth of online marketplaces has generated a new and increasingly significant
category of trademark litigation concerning the liability of e-commerce
platforms for infringing listings posted by third-party sellers. In Christian
Louboutin SAS v. Nakul Bajaj, the Delhi High Court held that an e-commerce
platform which goes beyond a passive, neutral role, for instance by actively
promoting, warehousing, or providing quality assurance in respect of products
bearing a registered mark without the proprietor's authorisation, cannot claim
the safe-harbour exemption from liability ordinarily available to
intermediaries under Section 79 of the Information Technology Act, 2000, the
Court laying down an illustrative list of factors relevant to determining
whether a platform's role is active or passive.[25]
VI. COMPARATIVE PERSPECTIVE
6.1
THE TRIPS AGREEMENT
India's
remedial framework for trademark infringement must be understood against the
backdrop of the Agreement on Trade-Related Aspects of Intellectual Property
Rights, 1994, to which India is bound as a member of the World Trade
Organization. Part III of the TRIPS Agreement, comprising Articles 41 to 61,
obliges member States to make available civil, administrative, and, in cases of
wilful trademark counterfeiting on a commercial scale, criminal enforcement
procedures, and further requires the availability of provisional measures and
border measures to prevent the entry of infringing goods into the channels of
commerce.[26] The Trade Marks Act, 1999
was substantially enacted to bring India's domestic law into compliance with
these obligations, and, as the analysis in Parts III and IV demonstrates,
India's civil remedies, criminal offences under Chapter XII, and border enforcement
mechanism under the 2007 Enforcement Rules broadly track the specific
requirements of Articles 44, 45, 46, 51, and 61 of the Agreement, concerning
injunctions, damages, disposal of infringing goods, border suspension of
clearance, and criminal penalties respectively.[27]
6.2
THE UNITED STATES
The
principal United States federal trademark statute, the Lanham Act, provides
remedies broadly analogous to those under the Trade Marks Act, 1999, including
injunctive relief, damages, and an accounting of the defendant's profits, but
with two notable points of contrast. First, Section 35 of the Lanham Act
expressly permits a court, in cases involving the use of a counterfeit mark, to
award statutory damages of up to two million dollars per counterfeit mark per
type of goods sold, at the plaintiff's election, in lieu of proving actual
damages or profits, a codified statutory damages regime that dispenses with the
evidentiary difficulty of proving loss or profit with precision.[28]
India, by contrast, has no equivalent statutory damages provision, and the
judicially developed practice of awarding punitive damages discussed in Part V,
while achieving a broadly similar deterrent objective, does so without the
predictability and consistency that a codified statutory formula would provide.
6.3
THE UNITED KINGDOM
The
United Kingdom's Trade Marks Act, 1994 provides a remedial structure similar in
substance to the Indian Act, including injunctions, damages or an account of
profits, and an order for erasure or destruction of infringing material,
reflecting the shared historical lineage of the two statutes noted in Part I. A
structural feature of particular relevance to the present study's evaluation of
Indian civil remedies, however, is the existence in the United Kingdom of the
Intellectual Property Enterprise Court, a specialised division of the High
Court offering a streamlined procedure, capped costs recovery, and a small
claims track for lower-value intellectual property disputes, designed
specifically to make enforcement accessible to small and medium-sized enterprises
that might otherwise be deterred by the cost of full High Court litigation.[29]
6.4
LESSONS FOR INDIA
The
comparative analysis undertaken in this Part, though necessarily brief, points
to two specific institutional lessons of direct relevance to the reform
suggestions developed in Part VIII: first, that a codified statutory damages
provision, of the kind found in the Lanham Act, could inject greater
consistency and predictability into Indian courts' existing practice of
awarding punitive damages; and second, that a dedicated, cost-capped forum or
track for lower-value trademark disputes, of the kind found in the United
Kingdom's Intellectual Property Enterprise Court, could meaningfully improve
access to civil remedies for India's smaller registered proprietors, who
presently make disproportionately little use of the civil remedial framework
relative to large corporate rights holders.
VII. CRITICAL ANALYSIS
7.1
CIVIL REMEDIES
The
civil track is the strongest limb of the framework, but three weaknesses
qualify it. First, the strength of the civil track depends heavily on the
discretion of individual judges, particularly in relation to ex parte relief
and punitive damages. The plaintiff's duty of full and honest disclosure, while
a necessary safeguard, means that the success of an application often turns on
the quality of drafting and preparation, an advantage that well-resourced
corporate proprietors enjoy far more readily than small traders. Second, the
requirement under Section 135(1) that the proprietor elect between damages and
an account of profits places the plaintiff in a difficult position at the
outset, since the defendant's true profits are ordinarily unknown until discovery,
and an election made without that knowledge may prove to have been the less
rewarding one. Third, the commercial court structure has introduced case
management and time-bound procedures, but it has not removed the underlying
cost and duration of a contested suit, a fact that explains why the civil track
is used disproportionately by large rights holders.
7.2
CRIMINAL REMEDIES
The
criminal track suffers from a gap between formal power and actual use. The
requirement that the police officer first obtain the Registrar's opinion is
defensible as a safeguard against misuse of the criminal process in what may be
a genuine civil dispute over a mark. In practice, however, it adds a step that
officers are unfamiliar with and that has no clear timeline, so that the speed
which the cognizable-offence status was meant to secure is lost. The result is
a perverse allocation of enforcement: corporate proprietors bypass the criminal
process in favour of privately organised raids under court-appointed
commissioners, while small proprietors who cannot afford such raids cannot rely
on the police either. The criminal remedy thus fails both the consumer-protection
rationale, since counterfeit goods that endanger health continue to circulate,
and the property-rights rationale, since the proprietor's goodwill remains
unprotected.
7.3
ADMINISTRATIVE REMEDIES
Whether
the transfer of jurisdiction to the High Courts has improved the speed and
quality of administrative remedies is uncertain, and the answer is probably
negative in the short term. Rectification and cancellation proceedings are
frequently the defensive counterpart of an infringement suit, since a defendant
commonly counterclaims for cancellation of the plaintiff's registration. The
transfer of jurisdiction places both the infringement claim and the
rectification claim before the same court, which may improve coherence and
reduce parallel proceedings, but it also means that rectification now competes
for judicial time with every other matter on the High Court's commercial
docket. The study has no empirical data with which to measure disposal times,
and this limitation must be acknowledged; the conclusion that the transition
has produced uncertainty rather than clear improvement rests on structural
reasoning and on the literature reviewed, not on statistical findings. The
appropriate response, discussed in Part VIII, is to build specialised capacity
within the High Courts rather than to restore a separate tribunal.
7.4
BORDER ENFORCEMENT
Border
enforcement is conceptually the most efficient remedy, since it intercepts
counterfeit goods before they enter the market, where the harm becomes diffuse
and difficult to trace. The Intellectual Property Rights (Imported Goods)
Enforcement Rules, 2007 give the proprietor a workable mechanism through
recordation with Customs. Its weakness is that it relies on the proprietor to
record its mark in advance and on customs officers, who are not trademark
specialists, to identify infringing goods among very large volumes of cargo.
The comparison with the International Trade Commission's exclusion order
procedure in the United States, which offers a specialised adjudicatory forum,
shows that the Indian mechanism places a heavier burden on the frontline officer
and a lighter burden on any adjudicating body. The mechanism also remains more
useful to large rights holders that can afford systematic recordation and
monitoring than to small proprietors.
7.5
ONLINE INFRINGEMENT
The
judicial response to online infringement has limits, however. First, it is
judge-made and therefore depends on the High Court in which the suit is filed,
so that the outcome for a proprietor may vary with the forum. Second, the
active-versus-passive test is fact-intensive and produces uncertainty for
platforms and proprietors alike until the facts are adjudicated. Third, the
doctrine of transborder reputation, which once offered wide protection to
foreign marks, has been qualified by the requirement in Toyota Jidosha
Kabushiki Kaisha v. Prius Auto Industries Ltd. that goodwill be proved
within India, which may make it harder for the proprietor of a foreign mark
that is well known online but has not yet entered the Indian market to obtain
relief. Finally, none of these decisions addresses the practical problem that
infringing sellers online can reappear under new identities within hours, which
the existing John Doe jurisprudence only partly answers.
VIII. SUGGESTIONS AND CONCLUSION
8.1
SUGGESTIONS
The
analysis points to the following reforms. First, Parliament may consider
introducing a codified statutory damages provision within Section 135 of the
Act, prescribing a defined range of damages that a court may award in cases
involving counterfeit marks without requiring detailed proof of actual loss or
profit, thereby lending consistency to the presently ad hoc judicial practice
of awarding punitive damages. As noted in Part VII, the provision should
preserve judicial discretion within the prescribed range. Second, the Central
Government and the Bureau of Police Research and Development should institute
structured training modules for police officers on the recognition and
investigation of offences under Chapter XII of the Act, with a view to increasing
the consistency and frequency with which the cognizable-offence machinery under
Section 115(4) is actually invoked, and the procedure for obtaining the
Registrar's opinion should be supported by a fixed, short timeline.
Third,
in view of the transitional difficulties identified following the abolition of
the IPAB, the High Courts may consider establishing dedicated intellectual
property divisions, staffed by judges with relevant subject-matter experience
and assisted by scientific or technical advisers where necessary, along the
lines already adopted by the Delhi High Court through its Intellectual Property
Division, so as to preserve a measure of the specialised adjudicatory capacity
that the IPAB previously offered. Fourth, the Commercial Courts Act, 2015 may
be amended to introduce a capped-cost, summary track for trademark disputes
below a specified monetary threshold, modelled on the United Kingdom's
Intellectual Property Enterprise Court small claims track, so as to improve
access to civil remedies for micro, small, and medium enterprises. Fifth, the
Central Board of Indirect Taxes and Customs should be encouraged to expand
outreach and simplify the trademark recordation process under the 2007
Enforcement Rules, particularly for smaller rights holders, and to strengthen
risk-based screening at high-volume ports of entry, so as to enhance the
practical reach of border enforcement discussed in Part IV. Sixth, the High
Courts may consider issuing consolidated practice directions on dynamic and
John Doe injunctions against online sellers, so as to reduce the variation in
outcomes noted in Part VII.
8.2 CONCLUSION
In
conclusion, the study's findings confirm the hypothesis advanced in Part I: the
principal deficiencies in India's trademark remedial regime lie not in the
substantive text of the statute but in the institutional and procedural
conditions of its implementation, namely the under-utilisation of criminal
remedies, the unsettled transitional consequences of the abolition of the IPAB,
the absence of a codified statutory damages regime, and the limited
accessibility of civil remedies to smaller registered proprietors. The
suggestions offered in this Part are accordingly directed not at wholesale
legislative redrafting but at targeted, implementable reforms capable of
closing the gap between the law as written and the law as experienced by
registered proprietors seeking to vindicate their rights, a gap that, if
narrowed, would considerably strengthen the practical value of trademark
registration as an instrument of commercial protection in India.
BIBLIOGRAPHY
A.
STATUTES AND RULES
1. The
Trade Marks Act, No. 47 of 1999, India Code (1999).
2. The
Trade Marks Rules, 2017, G.S.R. 199(E) (India).
3. The
Trade Marks (Amendment) Act, No. 21 of 2016 (India).
4. The
Trade and Merchandise Marks Act, No. 43 of 1958 (India) (repealed).
5. The
Code of Civil Procedure, 1908, India Code.
6. The
Specific Relief Act, No. 47 of 1963, India Code (1963).
7. The
Commercial Courts Act, No. 4 of 2016, India Code (2016).
8. The
Customs Act, No. 52 of 1962, India Code (1962).
9. Intellectual
Property Rights (Imported Goods) Enforcement Rules, 2007, G.S.R. 300(E)
(India).
10. The
Tribunals Reforms Act, No. 33 of 2021, India Code (2021).
11. The
Information Technology Act, No. 21 of 2000, India Code (2000).
12. Agreement
on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994,
Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869
U.N.T.S. 299.
13. Lanham
(Trademark) Act, 15 U.S.C. §§ 1051-1141n (2018).
14. Trade
Marks Act 1994, c. 26 (Eng.).
B.
TABLE OF CASES
1. Amritdhara
Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 (India).
2. Amway
India Enterprises Pvt. Ltd. v. 1MG Technologies Pvt. Ltd., 2019 SCC OnLine Del
9061 (India).
3. Bengal
Waterproof Ltd. v. Bombay Waterproof Mfg. Co., (1997) 1 SCC 99 (India).
4. Cadila
Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 (India).
5. Christian
Louboutin SAS v. Nakul Bajaj, 2018 SCC OnLine Del 12215 (India).
6. Hermès
International v. Crimzon Fashion Accessories Pvt. Ltd., 2024 SCC OnLine Del
(India).
7. Kaviraj
Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC
980 (India).
8. Madras
Bar Association v. Union of India, (2021) 7 SCC 369 (India).
9. Microsoft
Corp. v. Deepak Raval, 2007 (34) PTC 457 (Del) (India).
10. Milmet
Oftho Industries v. Allergan Inc., (2004) 12 SCC 624 (India).
11. National
Garments v. National Apparels, AIR 1990 Ker 119 (India).
12. N.R.
Dongre v. Whirlpool Corp., 1996 PTC (16) 583 (Del) (India), aff'd, (1996) 5 SCC
714 (India).
13. Satyam
Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., AIR 2004 SC 3540 (India).
14. Time
Inc. v. Lokesh Srivastava, 2005 SCC OnLine Del 558 (India).
15. Toyota
Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1 (India).
16. Wander
Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727 (India).
17. Yahoo!
Inc. v. Akash Arora, 1999 SCC OnLine Del 55 (India).
C.
BOOKS AND COMMENTARIES
1. P.
Narayanan, Law of Trade Marks and Passing Off (6th ed. 2004).
2. V.K.
Ahuja, Law Relating to Intellectual Property Rights (3rd ed. 2017).
3. W.R.
Cornish, David Llewelyn & Tanya Aplin, Intellectual Property: Patents,
Copyright, Trade Marks and Allied Rights (9th ed. 2019).
D.
ARTICLES, REPORTS, AND ONLINE SOURCES
1. Khaitan
& Co., IPAB Stands Temporarily Abolished in India (Apr. 2021).
2. Office
of the U.S. Trade Representative, Special 301 Report (annual).
3. World
Trade Organization, Trade Policy Review: India (periodic).
[8]The Trade Marks
Act, No. 47 of 1999, § 134(1), India Code (1999); Commercial Courts Act, No. 4
of 2016, §§ 3, 4, India Code (2016).
[10]Code of Civil
Procedure, 1908, Order XXXIX, rr. 1-2, § 151, India Code; Specific Relief Act,
No. 47 of 1963, §§ 36-42, India Code (1963).
[11]See Wander Ltd.
v. Antox India (P) Ltd., 1990 Supp SCC 727 (India) (laying down the
governing principles for the grant of interlocutory injunctions and the scope
of appellate interference therewith).
[12]See Time Inc.
v. Lokesh Srivastava, 2005 SCC OnLine Del 558 (India) (awarding punitive
damages in a trademark and copyright infringement suit against a defendant who
failed to contest the proceedings).
[13]See National
Garments v. National Apparels, AIR 1990 Ker 119 (India) (recognising the
utility of search and seizure orders in protecting evidence of infringement).
[17]Trade Marks Act,
No. 47 of 1999, § 91 (India) (as it stood prior to the 2021 amendment,
providing for appeals to the Appellate Board).
[23]N.R. Dongre v.
Whirlpool Corp.,
1996 PTC (16) 583 (Del) (India), aff'd, (1996) 5 SCC 714 (India).
[26]Agreement on
Trade-Related Aspects of Intellectual Property Rights arts. 41-61, Apr. 15,
1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C,
1869 U.N.T.S. 299.
How to Cite This Article
C. ISWARYA, A STUDY ON LEGAL REMEDIES FOR THE INFRINGEMENT OF REGISTERED TRADEMARKS IN INDIA., White Black Legal – International Law Journal, ISSN: 2581-8503, Vol. Volume 4, Issue VOLUME 4 ISSUE 2, October 2026, pp. 976-994. Available at: https://www.whiteblacklegal.co.in/details/a-study-on-legal-remedies-for-the-infringement-of-registered-trademarks-in-india
Author & Publication Record
Authors: C. ISWARYA
Registration ID: 107183 | Published Paper ID: WBL7183
Year: Oct- 2026 | Volume: 4 | Issue: 2
Approved ISSN: 2581-8503 | Country: Delhi, India
Page No.: 976-994
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