India: Protecting Trade Marks in India

Last Updated: 12 March 2018
Practice Guide by S.S. Rana & Co. Advocates

How to protect a trade mark in India?

Action which can be taken protection of Trade marks in India including an action against infringement and passing off are as follows:

  1. Cease and Desist notices
  2. Civil Action
  3. Criminal Proceedings
  4. Border Measures

Cease and Desist Notice

Misrepresentation and misuse of Trade marks without lawful authorization from the IP owner is common in the trade and, in our day-to-day lives we come across several counterfeit and fake products in the market. In view of this rising menace and its timely prevention, Trade mark owners resort to the means of sending Cease & Desist Letter (hereinafter referred to as C&D letter) to the potential infringers, prior to approaching the court of law. Sending a Cease & Desist Letter is regarded as an ancillary enforcement strategy to settle a dispute without resorting to Litigation.

Most of the times, sending of Cease & Desist Letter is the foremost remedies sought by Trade mark owners to prevent Trade mark infringement. Trade mark owners generally rely on Cease & Desist Letter as a cost-effective mean to enforce their rights against the infringer and before initiating legal action, with the intent to amicably resolve the matter.

Typically a C&D letter will outline the following:

  • The business and trade mark portfolio of the IP holder;
  • Information about the national and international repute the IP holder enjoys in its Trade marks;
  • The details of the impugned trade mark;
  • The extent of mis-use of the impugned trade mark by the infringer;
  • Requisitions as required to be complied with by the infringer.

Prior to sending of a Cease & Desist Letter, it is recommended that the IP holder, becomes fully aware of the extent of misuse of its trade mark by the infringer, and the details of such misuse keeping in mind the very important factor or the number of years of use by the IP holder.

It is also advisable that the IP holder prior to initiating an action against the infringer by sending a Cease & Desist Letter, carefully looks over its own IP portfolio, to cover for any sort of vulnerability to its rights.

Though sending of Cease & Desist Letter, is viewed as one of the most cost-effective method of addressing an infringement, there are certain risks associated with the same, such as:

  1. Suit For Groundless Threats: On receipt of a Cease & Desist Letter, the defendant may not be willing to admit to the misuse being carried out by him, and rather might initiate a suit for groundless threats against the IP holder/sender of the Cease & Desist Letter, in a competent court.
  2. Ex-Parte Injunction: Sending a Cease & Desist Letter, not only marks the first date of knowledge of misuse being carried out by the infringer, but also simultaneously alarms the infringer that the IP holder is aware of his conduct, which unless corrected holds the threat of legal proceedings being initiated. Therefore, in such circumstances, the infringer also remains prepared and might take appropriate steps such as filing a Caveat in the appropriate court, which completely diminishes the chances of an IP holder to obtain an ex-parte injunction.

Fabrication of Accounts: It may be noted here that in India, prior use of the trade mark holds more weightage than prior registration of the same. As a Cease & Desist Letter carries relevant details of the IP holder such as date of first use of the trade mark in India and Internationally and also the date of first registrations, such information when received by the infringer, can be misutilised by the infringer to alter his/her own accounts/records to show prior-use in the said mark.

Civil Action

Civil remedies can be enforced by a filing a suit for infringement and/or passing off in the competent court. Further the following reliefs of civil nature are available -

i. Interlocutory/Temporary/Ad-interim Injunction

Interlocutory/Temporary/Ad-interim Injunction generally mean prohibiting an action by a party to a lawsuit until the disposal of the suit. It is discretionary relief and granted only if the plaintiff is able to establish that there is prima facie case in his favour, the balance of convenience lies in his favour and if the temporary injunction is not granted he will bear irreparable loss.

ii. Mareva Injunction

Mareva injunction is to protect the interests of the plaintiff during the pendency of the suit and is granted to restrain the defendant from disposing of their assets within the jurisdiction until the trial ends or judgment in the action for infringement is passed.

iii. Anton Pillar Orders

In appropriate cases, the court has inherent jurisdiction on an application by the plaintiff made ex parte and in camera to require the defendant to permit the plaintiff to enter his premises and take inspection of relevant documents and articles and take copies thereof or remove them for safe custody. These are known as Anton Piller orders. The necessity for such an order arises when there is grave danger of relevant documents and infringing articles being removed or destroyed, so that the ends of justice will be defeated.

iv. John Doe Orders

John Doe orders are the orders issued by the court to search and seize against unnamed/ unknown defendants; which virtually translates into untrammeled powers in the hands of the plaintiffs, aided by court-appointed local commissioners, to raid any premises where infringement activities may be carried out.

v. Permanent/Perpetual Injunction

Permanent / Perpetual Injunction is a final order of a court that a person or entity refrain from certain activities permanently or take certain actions in perpetuity.

vi. Damages or Accounts of Profits

Damages or accounts of profits are two mutually exclusive remedies granted to the Plaintiff. Damages are granted to the plaintiff to compensate for the losses suffered by the Plaintiff on account of the defendant’s acts. Accounts of profits is an equitable remedy and requires the defendant to hand over to the plaintiff the actual amounts of profits made by him due to the infringing activities.

vii. Delivery-up and Destruction

Under this relief the infringing goods are delivered to the plaintiff or destroyed.

Criminal Proceedings

The Trade Marks Act, 1999 is the primary statute for the governing the law relating to the trade marks in India. The said act enumerates numerous offences in relation to the trade marks like falsifying and falsely applying a trade mark, making or possessing instruments for falsifying Trade Marks, applying false trade description, applying false indication of country of origin etc. The falsification and falsely applying a trade mark related to food and drugs is a cognizable offence. The punishment for the aforesaid offences varies from offence to offence but the maximum punishment can go as high as imprisonment up to 3 years with or without fine.

Border Measures

The IPR (Imported Goods) Enforcement Rules, notified in 2007 empower Custom Officers to enforce Intellectual Property Rights over the imported goods. The said rules provide a detailed procedure by which a right holder can register his Intellectual Property Rights with the customs officials. The registration imposes an administrative duty on the Customs Department to protect the right-holder against violation of his Intellectual Property Rights.

It is important to note that the Customs Officials can suspend the clearance of goods if it has prima facie evidence or reasonable grounds to believe that the goods are counterfeit. This suspicion or belief can arise either when a notice has been filed by the Right holder with the customs or even in the absence of such notice a suo moto action can be taken.

Registration with CBEC, empowers the Customs Authority to intercept, seize, and confiscate goods found to be or suspected to be infringing Intellectual Property Rights registered and in-force in India by any person other than the Intellectual Property Rights holder or without permission/authorization of the Intellectual Property Rights. Further by making one application the applicant can cover all the Customs Air Cargo Complexes, Seaports and Land Customs Stations through which importation or exportation of pirated article is suspected in India. The registration is usually obtained within a month and is valid for five years. Once registered the Customs Authority store the IPR in their electronic database which is flashed across all entry points in India.”

This document is not intended to create an attorney-client relationship. You should not act or rely on any information in this document without first seeking legal advice. This material is intended for general information purposes only and does not constitute legal advice. If you have any specific questions on any legal matter, you should consult a professional legal services provider.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Contact the Author?
Click here to email the Author
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Other India Advice Centres
Insolvency and Restructuring
Arbitration, Litigation and Conciliation
More Advice Centers
Significant Recent Cases
The latest IP news courtesy of S.S. Rana & Co.
Useful Resources
Useful IP Articles and Publications courtesy of S.S. Rana & Co.
Useful links related to patents and industrial IP rights, government resources, and association resources.
Useful links related to patents and industrial IP rights, global and regional IP offices and organisations.
Upcoming Events
A calendar of past and future events by S.S. Rana & Co.
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions