Trademark Disputes

In India, the Trade Marks Act, 1999 governs the initiation of actions for misuse of a trademark to seek appropriate remedies. Under the act, both criminal and civil actions can be initiated by a trademark owner to enforce its rights.

The procedures for civil and criminal actions are governed by different statutes. In case of a civil action, the Code of Civil Procedure of 1908 governs the procedure before the civil courts. Further, the procedure for evidence and trials in civil proceedings is governed by the Bharatiya Sakshya Adhiniyam, 2023, which recently repealed the Indian Evidence Act, 1872. In addition, regional courts may have specific rules to govern them as per local practice and proceedings before such courts must comply with such court-specific rules. For instance, commercial courts or commercial divisions within high courts are governed by the Commercial Courts Act, 2015 and rules framed thereunder.

In case of a criminal action, the Bharatiya Nagarik Suraksha Sanhita, 2023, which repealed the Criminal Procedure Code of 1973, governs the procedure for administration of substantive criminal law in India.

There are no bilateral or multilateral agreements currently in force in India with specific relevance to trademark litigation.

The relevant forums for enforcing the trademark rights differ depending on:

• the nature of the action; and
• the local jurisdiction in India.

A civil suit for infringement or passing off cannot be filed before a court lower than a district court. That said, a suit for infringement or passing off can also be filed directly before other courts within the Indian court hierarchy – for instance, those that might have appropriate jurisdiction under the commercial courts legislation.

The jurisdiction of a court is determined by different factors, such as:

• the cause of action;
• the residence or place of business of the plaintiff/defendant; and
• the valuation of the lawsuit.

When filing a civil suit, a plaint must be filed before the relevant court with jurisdiction to entertain such suit.

A criminal complaint, on the other hand, can be submitted directly before the law enforcement authorities of the jurisdiction where the cause of action has arisen. However, if the law enforcement authorities do not initiate formal criminal proceedings based on the complaint, a petition can also be made before a competent local court seeking directions for law enforcement authorities to initiate formal proceedings.

• Civil trademark litigation matters are heard by civil courts with competent jurisdiction.
• Criminal matters are initiated before the local law enforcement authorities.
• Proceedings relating to the validity of registered trademarks can be initiated before either:
• • the relevant high courts; or
  • the registrar of trademarks through the appropriate regional office of the Trade Marks Registry.

India does not have a jury-based trial system. As such, matters before courts of law are heard by judges/magistrates. In criminal matters, the law enforcement authorities are authorised to investigate a matter and initiate formal proceedings, which are then heard and decided by a court of law.

Disputes concerning the validity of a registered trademark before the Trade Marks Registry are heard by the relevant officers of the registry; these are not considered judicial proceedings and are largely administrative in nature. However, if the invalidity proceedings are initiated before a court of law, then the matters are heard by the judges of that court of law.

Yes, it is possible for the plaintiff to engage in forum shopping in civil trademark litigation matters in India – although this practice is frowned upon and may be considered a relevant factor in a judge’s ruling.

In civil suits, jurisdiction is determined by Section 20 of the Code of Civil Procedure, which allows for the institution of a suit at a place where:

• the defendant:
• • actually and voluntarily resides; or
  • carries on business; or
  • works for personal gain; or
• the cause of action has arisen.

However, the Trade Marks Act provides for an additional forum for filing of a trademark infringement suit. As per Section 134(2) of the Trade Marks Act, a suit can be filed at the place where the plaintiff:

• actually and voluntarily resides; or
• carries on business; or
• works for personal gain.

As multiple options are available for filing of a civil suit in a trademark dispute – particularly infringement proceedings – parties often choose a jurisdiction based on:

• the litigant’s convenience; and
• the likelihood of securing favourable orders.

A suit for trademark infringement can be filed by the registered proprietor or registered user. For context, a registered user is the licensee of a registered proprietor which has been recorded as such for the relevant trademark before the Trade Marks Registry.

As it is not mandatory to record licences before the Trade Marks Registry in India, licensees that have not been recorded before the registry do not have the right to initiate infringement proceedings in their own name – though such a licence is otherwise considered valid and they may continue to use the mark under licence. Use made by such a licensee also accrues to the benefit of the registered proprietor.

If the infringement has taken place in the territory of India and a cause of action exists in India, a trademark infringement suit can be filed even against a defendant which is a foreign entity with no residence or place of business in India.

Yes, it is possible to initiate a single infringement action against multiple defendants. As per the Code of Civil Procedure, all such defendants can be joined together in one suit where the plaintiff’s right to relief is based on the same act or transaction. Another facet that the courts look at in such cases is whether common question of law or fact would arise if separate suits were filed against all such defendants.

It is possible to seek cancellation of a national or international registered trademark (designating India) in India. The grounds and procedure for cancellation of domestic and international trademarks are the same. A cancellation action can be filed by an aggrieved party on any of the following grounds:

• The mark was registered without any bona fide intention to use and there has been no use of the mark for a period up to three months before filing of the cancellation petition.
• The mark was not put to use for a continuous period of five years from the date on which the mark was actually entered on the register.
• There has been a contravention or failure to observe a condition entered on the register in relation to the trademark.
• The mark was registered without sufficient cause or, an entry wrongly remains on the register or there is an error or defect in any entry in the register. This is broad enough to include marks registered in contravention of any of the provisions of the Trade Marks Act, including both absolute and relative grounds for refusal.

Moreover, a suo moto action for cancellation of a registered trademark can also be initiated by the relevant forum under the third and fourth grounds above, absent any petition by an aggrieved person.

To file a cancellation action, a petition must be filed before either the Trade Marks Registry or the relevant court.

While the Trade Marks Act does not expressly provide for a suit for declaration of non-infringement or invalidity, it does provide for a suit for groundless threat against a trademark owner that threatens the plaintiff with an action for trademark infringement by sending a notice or otherwise. In such a suit, the party may:

• obtain a declaration to the effect that the threats are unjustifiable;
• seek an injunction against the continuance of threats by the trademark owner; and
• claim damages from the trademark owner.

Apart from the Trade Marks Act, the Specific Relief Act, 1963 also provides for the institution of a suit seeking a declaration of the plaintiff’s rights if such rights are denied by the defendant. Thus, if a party apprehends that its right to use a mark is likely to be denied or objected to by another party, a suit seeking declaratory relief can be initiated against that party.

In practice, the filing of declaratory suits for trademark non-infringement or invalidity is not very common in India.

As per Section 29 of the Trade Marks Act, broadly the following uses of a mark by someone apart from the registered proprietor or permitted user amount to infringement:

• use of a mark that is similar or identical to a registered trademark in respect of goods or services that are similar or identical to those covered by the registered trademark, which is likely to cause confusion or likely to have an association with the registered trademark;
• use of a mark that is similar or identical to a registered trademark with a reputation in India in respect of goods or services that are dissimilar from those covered by the registered trademark, to the extent that such use without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark;
• use of a registered trademark as a trade name or part of trade name, or the name of business concern or part of the name of business concern, dealing in goods or services in respect of which the trademark is registered; or
• use of a registered trademark in advertising, if such advertising:
• • takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
  • is detrimental to the distinctive character or reputation of the trademark.

The following factors are usually taken into consideration in determining whether a mark has been infringed:

• Similarity of marks: The Indian courts follow the judicial principle of entirety in conducting a holistic comparison of the marks. This also flows from the Trade Marks Act which stipulates the grant of statutory rights over marks taken as a whole and not over individual components thereof. In assessing similarity, the courts may consider:
• • the visual and phonetic similarity of the respective marks; and
  • other factors that may be relevant to the facts of the specific case.
• Similarity of goods or services: The courts are also required to assess the similarity or identity of the respective goods or services. The nature of goods or services, trade channels, the relevant market and end consumers are relevant factors for assessing the similarity of the goods or services.
• Likelihood of confusion/association: The similarity between the marks and the goods or services must result in either:
• • a likelihood of consumer confusion; or
  • a likelihood of association with the mark of the registered proprietor.
• If the respective marks and goods or services are identical, there is a presumption of a likelihood of confusion. Further, the likelihood of confusion or association is generally seen from the perspective of an average consumer with imperfect recollection.
• Dilution: If the goods or services of the parties are different, the plaintiff must prove that its registered trademark has a reputation, to the extent that the infringing mark takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark.

The concept of wilful infringement is not expressly defined under Indian law. However, the deliberate conduct of an infringer is a relevant factor that the courts may consider within a given dispute.

The intention to infringe alone may not be sufficient for the courts to return a finding in favour of the plaintiff. While the finding of intention to confuse or cause infringement can materially assist the plaintiff, the ingredients of infringement must be independently established and proved.

It is also relevant here that the Indian courts have, time and again, invoked the principle laid down by Lord Justice Lindley in Slazenger & Sons v Feltham & Co, which states that where an intention to deceive is found, it is not difficult for the court to infer that the intention has been, or in all probability will be, effective. However, a finding of infringement does not follow ipso facto and the courts will assess the similarity of marks and the chances of confusion independently – while also taking into account the defendant’s intention.

Moreover, once a case for infringement has been made out, the defendant’s fraudulent acts may also be a basis for the court to grant damages to the plaintiff – especially in the case of habitual infringers.

The proprietor of a registered trademark can initiate a civil and/or a criminal action against the misuse of its trademark. A civil action can be initiated for infringement and/or passing off.

A trademark owner can also record its mark with Customs, which can help to prevent the import of infringing goods into India.

The Trade Marks Act stipulates that if a trademark owner takes no action against the use of a competing mark for more than five years after becoming aware of such use, it will be deemed to have acquiesced to such use. In such cases, acquiescence can be a strong defence against an infringement claim. However, the statutory defence of acquiescence will be valid only if the defendant’s adoption and use were not in bad faith. While the defence of acquiescence can also be raised within this five-year period, the defendant must then show that the plaintiff actively acquiesced through positive acts or omissions and not merely through passive knowledge of use.

That said, in most trademark disputes, there is typically a continuing cause of action based on which the plaintiff may initiate infringement proceedings. In such cases, the plaintiff must ensure that there is no unreasonable delay in bringing suit, especially where urgency is claimed towards seeking interim relief.

Even in case of passing off or other common law remedies, delays and laches can act as mitigating factors.

There is no statutory requirement to notify the alleged infringer before initiating an infringement action across the board. That said, various regional courts in India have local practice-related rules that may mandate service of the plaintiff’s pleadings on the defendant once the suit has been filed but before it is taken on record and listed for arguments. In most ordinary disputes, however, the courts will direct that a copy of the plaintiff’s pleadings be served on the defendant to afford it the opportunity to present its defence.

However, there may also be specific cases where the courts may allow a suit to initially proceed without such service – for instance, if the plaintiff can make out a justifiable case for ex parte interim relief where it anticipates the destruction of evidence.

To initiate a trademark infringement suit, a plaint must be filed before the relevant court. Among other relevant details, the plaint should contain:

• the cause of action;
• justification regarding jurisdiction;
• details of the rights of the plaintiff; and
• specific prayers sought from the court.

The trademark owner must also adduce:

• the relevant documentary evidence to support its case; and
• affidavits and other ancillary documents.

To file a suit, the plaintiff must also submit court fees, which may:

• depend on the valuation of the suit; and
• be impacted by the practice-related rules of the relevant jurisdictional court.

Yes, it is possible to seek interim remedies in India. In fact, given that the final disposal of a suit on the merits may take years (especially considering the multiple levels of appeal), interim remedies are increasingly becoming the most important – and most contested – type of relief in IP disputes across India. While interim remedies may take many forms – for instance, interim costs or directions to a defendant to maintain accounts – by far the most commonly sought interim relief in IP disputes in India is an interim injunction. As the ability to continue making sales under a given brand or restriction from doing so can be critical for the survival of a business, interim injunctions can often make or break a litigant in practical terms.

To claim interim relief, along with the suit itself, the plaintiff must file a separate application for interim injunction/relief:

• detailing the grounds on which such relief is sought; and
• establishing urgency, where relevant.

To be able to secure interim relief, a plaintiff must make out a prima facie case in its favour. A court will hear and decide an application for interim relief before moving to trial on the merits. Procedurally, since interim rulings can also be separately appealed, it is not uncommon for multiple proceedings within the same dispute to be heard simultaneously before different courts.

Security of costs is governed by the Code of Civil Procedure. At any stage of a suit, the court may order the plaintiff to provide security for the payment of all costs incurred and likely to be incurred by the defendant. This can be done by the court either:

• of its own motion; or
• on the application of the defendant.

It is usually at the court’s discretion to pass an order for security of costs. Such power may be exercised only in exceptional circumstances, where it can be shown that the exercise of power is necessary for the reasonable protection of the interests of the defendant.

That said, the Code of Civil Procedure mandates that an order for security of costs be passed in cases where the plaintiff:

• resides outside India; and
• does not possess sufficient immovable property within India.

However, there are divergent views as to whether such a mandate is applicable to IP cases and this issue is currently being litigated by the Delhi High Court.

India does not follow the concept and procedure of disclosure in court proceedings in the same manner as many other jurisdictions. That said, in India, the parties must disclose the material facts which are essential for adjudication of the matter.

The Indian courts have held that suppressing material facts and not coming with clean hands may disentitle the petitioners to discretionary relief in law. It is settled law that a person who approaches the court for granting relief, equitable or otherwise, is under a solemn obligation to candidly and correctly disclose all the material/important facts which have a bearing on the adjudication of the issues raised in the case.

Therefore, the parties owe a duty to the court to:

• bring out all the facts; and
• desist from concealing/suppressing any material fact:
• • within their knowledge; or
  • which they could have known by exercising due diligence expected of a person of ordinary prudence.

If a person is found to have concealed material facts, the courts may refuse to grant it the relief to which it otherwise might have been entitled.

India has not framed any rules on third-party disclosure.

As is the case for disclosure (see question 6.1 and 6.2), the concept of privilege is not similar to how it is recognised in some of the other jurisdictions. One of the most commonly asserted concepts of privilege in India is attorney-client privilege. Attorney-client communications are privileged in India and cannot be disclosed by the attorney without the express consent of the client.

However, if the communication has been made in furtherance of any illegal purpose, privilege does not apply and the information may be disclosed.

The procedure for gathering evidence in civil proceedings, including trademark infringement litigation, is governed by the Bharatiya Sakshya Adhiniyam, 2023 (BSA). The first step in a suit is to file a plaint, which is followed by the filing of a response by the defendant (usually called a ‘written statement’). These pleadings are typically accompanied by supporting documents that the respective parties intend to rely on. Each party is also given the opportunity to admit or deny the other side’s documentary evidence, based on which the documents must then be proved at trial by the adducing party.

After filing of the pleadings, the court will frame the issues which require its adjudication. Once the issues have been framed, the parties will furnish a list of witnesses that they wish to produce in support of their case. Next, the testimony of witnesses takes place, which includes cross-examination by both parties. As a last step in the suit, arguments are made by the respective parties.

The BSA provides for two types of evidence: oral and documentary. All facts except the contents of documentary evidence may be proved by oral evidence and oral evidence must in all cases be direct.

Further, documentary evidence can be proved by primary or secondary evidence. Primary evidence is the original document itself, while secondary evidence refers to those that proves content of the original.

Further, both expert evidence and survey evidence are also recognised in trademark infringement suits in India. However, expert evidence is not used in trademark infringement cases as much as in other IP disputes which involve some technical aspects, such as those relating to patents and geographical indications. Expert evidence may be produced by the parties to support their technical claims. At times, the courts may also appoint an expert in the relevant technical field to assist it.

The Indian courts have considered market surveys when deciding trademark infringement suits. However, the courts have held that the survey evidence relied on by the parties should be thoroughly examined. Moreover, the weight given to such survey evidence in the final decision of the courts is:

• dependent on the court’s discretion; and
• typically targeted more towards issues such as reputation and likelihood of confusion in the relevant market.

Barring a few exceptions, there are no provisions in the Indian law that deal with the admissibility of evidence from criminal proceedings in civil proceedings and vice versa. That said, judicial precedents indicate that in some cases, evidence from criminal proceedings has been admitted in civil proceedings.

As the objective and standard of proof in both civil and criminal proceedings are different, the evidence from one proceeding may not directly be binding in the other proceedings. However, evidence from one proceeding may certainly have a bearing on the other proceedings in terms of persuasive value.

The judicial precedents on this point specifically in respect of trademark proceedings are extremely limited and hence, there is not enough clarity. Therefore, it can be said that much will depend on the discretion of the court regarding the admissibility of evidence from one proceeding in the other.

In India, the standard of proof in civil cases is ‘preponderance of probability’. The term ‘preponderance of evidence’ has been defined in Black’s Law Dictionary as evidence which is of greater weight or more convincing than the evidence which is offered in opposition to it. As such, civil cases are decided by weighing the probability of the evidence adduced by each party.

However, the standard of proof is higher in criminal cases where the presumption of innocence is considered as a fundamental principle. In other words, in criminal cases, a person is presumed innocent until proven guilty. Therefore, the standard of proof in criminal cases is ‘beyond reasonable doubt’ – that is, proving that the person is guilty beyond any reasonable doubt.

In trademark infringement proceedings, the burden of proof rests with the plaintiff to establish the case for infringement. The onus on the defendant is to disprove the claims made by the plaintiff.

However, if the defendant is making any claims of its own such as challenging the validity of the plaintiff’s registered trademark, the burden of proof is on the defendant to prove all such claims.

The Trade Marks Act broadly provides for the following defences in case of a trademark infringement action:

• The defendant’s use of the mark was prior to the date of application and first use of the registered trademark;
• There was no likelihood of confusion due to the defendant’s use of the mark;
• The use of the mark is in accordance with honest practices and is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trademark;
• The use constitutes descriptive and nominative fair use of the trademark;
• The registered trademark is liable to be invalidated on any ground; or
• There has been a significant delay in initiating an action for infringement, despite being aware of the use by the defendant, amounting to acquiescence.

Yes, it is possible for the defendant to plead invalidity of the plaintiff’s registered trademark. Invalidity can be pleaded on any of the grounds set out in the Trade Marks Act, which include:

• non-use of the registered trademark;
• the registered trademark being non-distinctive or descriptive;
• the trademark being registered in bad faith; or
• the trademark being registered despite the defendant having prior superior rights.

If the defence of invalidity is raised, the defendant must then initiate proceedings to invalidate the registered mark before a competent court. During the pendency of these proceedings, the trial of the main infringement lawsuit is stayed until such time as the invalidation proceedings are first heard and adjudicated. That said, even where simultaneous invalidation proceedings are ongoing, the court hearing the infringement suit may still hear and decide any claims for interim relief sought by the plaintiff.

If a trademark has been registered subject to any conditions or limitations, the use of the mark by a third party does not amount to infringement if such use is in respect of any goods or services to which the registration does not extend, having regard to those conditions or limitations.

Moreover, two registered proprietors of similar/identical marks may not enforce their rights in such marks against each other, even though their marks may still be enforceable against other third parties. However, such an action may be allowed if the plaintiff files an infringement action claiming invalidity of the defendant’s registration.

Alternative dispute resolution methods, including mediation, are available in trademark infringement proceedings. If a suit is filed before a court other than a commercial court, the parties may, at their own discretion, engage into settlement discussions or the court may direct the parties to do so.

However, if a suit is filed before the commercial courts in India, it is mandatory for the parties to exhaust the remedy of ‘pre-institution mediation’. In other words, a suit before commercial courts will be entertained only if the parties have unsuccessfully explored the option of mediation. That said, if the plaintiff is seeking any urgent interim relief in the suit, the mandatory requirement of engaging into mediation may be done away with. However, even in such cases, the courts usually undertake a limited exercise to satisfy themselves that the urgent interim relief sought by the plaintiff is not a ruse to bypass the statutory mandate of the pre-institution mediation.

If the parties are voluntarily entering into settlement discussions while a suit is ongoing or are directed by the court to do so, the proceedings may be temporarily deferred to allow the parties a chance to resolve the matter among themselves. Depending on the facts, a judge may also impose a timeline (often flexible and discretionary) within which the discussion should conclude, failing which the suit proceedings may recommence.

This depends on whether settlement discussions are voluntary between the parties or undertaken under formal pre-institution mediation. Voluntary discussions are typically much more informal in terms of procedure and allow the parties more flexible timelines. Usually, these culminate in either:

• a settlement agreement being executed; or
• a statement being made to a court, based on which the suit may be decreed.

The parties generally keep the court apprised as to how the discussions are progressing and may disclose the actual settlement terms once they have been finalised and agreed between the parties. If they so choose, and the court allows, the specific settlement terms may be kept confidential.

On the other hand, if the parties are undergoing formal pre-institution mediation, the mediator will play a more active role in facilitating the discussion and then provide a report to the court on the success or failure of the mediation. The suit may then proceed further or be closed accordingly. Even in mediation, if the parties are successful in resolving the dispute, the terms of the settlement may be kept confidential subject to the court’s discretion.

Proceedings related to trademark infringement and invalidity in India are conducted in open court, with the pleadings and documents adduced as part of the proceedings becoming public record. While some specific kinds of proceedings may be conducted in chambers/privately, this typically does not apply to trademark matters. That said, if there are specific documents or submissions within infringement proceedings that are confidential in nature, the parties may submit such documents under sealed cover and request the court to maintain such confidentiality. In such cases, and subject to the court’s discretion, the documents do not become part of the otherwise accessible public record. This practice is most common in patent disputes but is not uncommon in trademark disputes, especially regarding issues such as:

• financial information;
• business plans; and
• settlement terms.

Yes, it is possible to sue for trademark infringement and passing off in the same action. However, as trademark infringement is a statutory remedy, the Trade Marks Act provides for additional jurisdictions for the plaintiff to initiate such an action, which are not available in case of passing off. As such, it can be the same action for infringement and passing off only if the suit is filed before a court that has jurisdiction to entertain both of these actions independently.

Trademark infringement proceedings sometimes vary as per the local practice of the court before which the claim is brought. However, broadly speaking, such proceedings are consistent with other kinds of commercial suits.

The invalidity of a registered trademark flows from a separate provision of the Trade Marks Act and requires separate proceedings for adjudication. Since the issue of invalidity may be decided by either the Trade Marks Registry or a competent court, the procedure depends largely on the forum adjudicating the dispute.

If the invalidity proceedings are initiated before the Trade Marks Registry, then after filing of the petition, the registered proprietor must file its counterstatement. Thereafter, both parties are granted the opportunity to submit their evidence by way of affidavit – first the petitioner followed by the respondent. The petitioner will have an additional opportunity to file its evidence in reply to the evidence filed by the registered proprietor. Lastly, a hearing is appointed and, after arguments, an order is passed.

The timeframe for court proceedings in India is inherently difficult to determine, as these proceedings involve a lot of variables such as:

• the local practice of the court;
• any case backlog; and
• any local administrative issues.

For instance, it can take as little as one hearing and as much as a few years for an interim injunction to be issued in trademark infringement proceedings, depending on the case. Final adjudication of a suit on the merits generally takes a few years. Court proceedings usually involve written pleadings and some form of oral arguments taking place more or less simultaneously. On the other hand, if an invalidation proceeding is before the Trade Marks Registry, all of the written pleading are completed before a hearing is scheduled for oral arguments. Given current trends at the Trade Marks Registry, even the first hearing may take place a few years after the written pleadings are complete. As such, a final decision may take several years to obtain.

While it is not possible to fast-track the proceedings as a whole, a plaintiff in an infringement proceeding may seek specific relief at the interim stage, for which a prima facie case must be established. Procedurally, a court will hear and decide these interim claims before moving on to the main suit on the merits.

Injunctions passed by any Indian court, whether interim or permanent, apply to persons or entities that are subject to its jurisdiction. Depending on the issuing court, these may be local, regional or national. However, Indian courts may not grant injunctions that apply outside the territory of India.

Subject to reciprocity arrangements, decisions of foreign courts do not directly apply to or bind Indian courts. In some cases, decisions of foreign courts may be used in evidence to enforce against parties in India or subject to Indian law, under separate actions. Also, if a particular area of law or legal issue has not yet been judicially tested in India or lacks binding domestic precedent, foreign jurisprudence on similar facts and issues may have some persuasive value in guiding the court. As India is a common law jurisdiction, decisions from other common law jurisdictions may be given some weight.

The following remedies may be sought for trademark infringement in India:

• injunctions – apart from a permanent injunction, interim injunctive relief may also be sought. Interim relief may include things such as:
• • discovery of goods;
  • preservation of infringing goods, documents or other evidence; and
  • restraint of the defendant from dealing with its assets in a manner which may adversely affect the plaintiff’s ability to recover damages;
• rendition of accounts or damages – a plaintiff may seek rendition of accounts or damages, but not both; and
• the cost of legal proceedings.

Yes, punitive or exemplary damages are granted in India. While the grant of such damages is rare and discretionary in nature, the courts have become more inclined in recent years to grant such damages in specific cases – for instance, those involving bad-faith or habitual offenders.

In India, there is no statutory requirement always to grant damages in trademark infringement cases. As a matter of practice, damages are awarded at the discretion of the court. That said, the Delhi High Court, in Koninlijke Philips NV v Amazestore (AIRONLINE 2019 DEL 826), devised the following formula for calculation of damages in IP cases:

While there are judicial decisions on guidelines for the grant of damages, this is still predominantly dependent on the court’s subjective discretion and the facts of each case. However, the intention of the infringer and the nature of infringement play an important role in arriving at a decision for the grant of damages.

Yes, a decision of a first-instance court may be appealed before an appellate body, although the process and available levels of appeal may differ based on issues such as:

• subject matter;
• jurisdiction; and
• competent courts.

For instance, a decision issued by the Trade Marks Registry may be appealed before a judge of the relevant high court with territorial jurisdiction. On the other hand, a ruling made by single judge of a high court in a commercial lawsuit may be appealed before a division bench of the same high court and so on up until the Supreme Court, as applicable.

Decisions may be challenged on the following grounds, among others:

• It is against the principles of natural justice;
• It shows non-application of mind or lacks reasoning where reasons must be recorded in writing; or
• It omits or insufficiently appreciates the evidence on record, or incorrectly interprets a statute or binding precedent.

The timeframe for deciding an appeal is as unpredictable as a regular first-instance decision. The timelines are difficult to estimate and vary depending on several factors, including:

• jurisdiction;
• legal forum;
• subject matter;
• caseload and backlogs;
• administrative delays; and
• human factors.

In terms of government fees, the plaintiff must pay court fees for instituting a suit. The court fees:

• are determined by the relevant rules governing the proceedings of the particular court; and
• generally depend on the quantum of reliefs claimed by the plaintiff.

While parties – typically the plaintiff – will usually request an order of costs (eg, litigation costs and legal fees) to accompany other relief being sought, costs:

• are not awarded by default or as a matter of right; and
• are completely dependent on the court’s subjective discretion.

Indian law prohibits contingency fees or other similar arrangements that may depend on the outcome of a case.

While there is no dedicated central legislative framework on third-party litigation financing in India, there is no explicit statutory bar either. The only condition seems to be that the funding cannot be made by an attorney on behalf of their client, whether:

• structured as contingency fees; or
• otherwise depending on outcomes.

Although it is not yet common practice in Indian litigation, third-party funding seems to be a growing area of interest, where stakeholders/funders could include players such as:

• specialised litigation financers;
• banks; and
• insurance companies.

Yes, an action for the common law tort of passing off can be initiated by the owners of unregistered marks. A passing-off claim can be brought by the owner of an unregistered mark to prevent a third party from using or registering a trademark whose use amounts to passing off their goods/services as those of the owner of unregistered mark.

An action for passing off can be initiated by the owner of a foreign trademark that is not registered in India. To determine passing off, the courts will apply the ‘classical trinity’ test. As such, the plaintiff must prove the following to succeed in a claim of passing off:

• goodwill of the plaintiff;
• misrepresentation by the defendant; and
• likelihood of damage to the plaintiff.

While proving goodwill is one of the essential ingredients of a passing-off action, if it can be established that the defendant’s mala-fide intent to imitate is apparent, the requirement to establish prior goodwill may be obviated. However, misrepresentation must be proved by the plaintiff. As regards damages:

• actual loss may not have to be shown; and
• a likelihood of damages is sufficient to establish passing off.

A notable shift in the trademark litigation landscape occurred when the Intellectual Property Appellate Tribunal (IPAB), which was an appellate body dealing with orders passed by the Trade Marks Registry, was abolished in 2021. Thereafter, the powers of IPAB were transferred to the commercial courts. Against the backdrop of this development, the Delhi High Court became the first court in the country to set up a dedicated IP division, which became functional in 2022. This division has its own rules of procedure and acts as both:

• an appeals court (eg, appeals against Trade Marks Registry orders); and
• a court of first instance (eg, in commercial litigation involving intellectual property).

While things continue to evolve on the ground, this transition has so far resulted in significantly faster timelines, especially in appeals against Trade Marks Registry decisions, as compared to previous years when appeals often languished for years before IPAB. The Delhi High Court has also delivered some significant judgements in the IP field in recent years.

Following the Delhi High Court, the Madras High Court has also set up its own IP division, with other jurisdictions in the process of following suit. As such, we may expect more regional courts to be IP friendly and thus beneficial for trademark owners seeking to protect their rights in India.

The Indian judicial system is unique, with its own processes and idiosyncrasies. The first and most important recommendation to any party – whether initiating or facing trademark litigation – is to familiarise themselves with the Indian litigation landscape itself, and set expectations accordingly. This could include everything from timelines and procedural aspects to judicial trends, jurisdictional rules and costs.