In India, trade marks are primarily governed under the Trade Marks Act 1999 and the Trade Marks Rules 2017, forming a comprehensive regulatory regime coupled with common law provisions.

In addition to the statute, official guidelines issued by the Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM), such as the Trade Marks Manual, court precedents and decisions of the Trade Marks Office (TMO) govern several aspects of trade mark law in the country. Further, the decisions of High Courts are binding on lower courts in their respective jurisdictions and they form an important source of trade mark law.

There are also ancillary laws which impact trade marks, for instance: the Copyright Act 1957, the Companies Act 2013 and, in limited cases, the Designs Act 2000.

Further, there are certain government guidelines or acts – such as the Ministry of Ayurveda, Yoga, Naturopathy, Unani, Siddha, Sowa-Rigpa and Homoeopathy (AYUSH), and the Emblems and Names (Prevention of Improper Use) Act 1950 – which impact trade marks law in the country. 

Treaties and Conventions

India is a signatory to the Paris Convention on Industrial Property, the WIPO Madrid Agreement Concerning the International Registration of Marks 1891 (Madrid Agreement), the WIPO Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 1989 (Madrid Protocol) and the Nairobi Treaty.

India further abides by the Nice Agreement on the International Classification of Goods and Services, and to the Vienna Classification, established by the Vienna Agreement.

A "trade mark", as defined by the Trade Marks Act 1999, is a mark capable of being graphically depicted and capable of differentiating one person's goods or services from those of others, and may include the shape of goods or their packaging, as well as colour combinations. This definition of trade mark is inclusive and evolving.

The following are examples of trade marks that can be registered in India:

• any name (including the applicant's or predecessor's in business personal name or surname, or the person's signature), which is not unusual for trade to use as a mark;
• letters or numerals, or any combination thereof;
• an invented word or any arbitrary dictionary word(s), which are not directly descriptive of the character or quality of the goods/services;
• devices, including fancy devices or symbols;
• slogans, domain names and monograms;
• combinations of colours or even a single colour in combination with a word or device;
• the shape of goods or their packaging;
• marks constituting a three-dimensional sign;
• sound marks when represented in conventional notation or described in words by being graphically represented;
• certification and collective trade marks; and
• service marks or trade dress.

As a first-to-use country, unregistered trade marks with prior usage can be protected under common law in India. The passing off of trade marks is a tort actionable under common law and is mainly used to protect the good will association with a mark.

The Indian trade mark statute provides special protection to certain marks; for instance, the Olympic Symbol, the Olympic motto, and the phrases Olympic(s), Olympian(s), and Olympiad(s) are not to be registered as trade marks in India without prior permission from the Olympic Committee. 

On the basis of international, national and cross-border repute, the TMO recognises well-known trade marks in India. Such trade marks that are "well known" are given greater protection under the law, which protects them from infringement and passing off in all the classes.

There are certain trade marks governed by charters, such as the one developed by the Scotch Whisky Association (SWA) and its members which protect the SWA trade mark.

Similarly, a mark is prohibited for registration as a trade mark under the following conditions.

• If it comprises any matter that is likely to offend the religious sensibilities of any class or segment of Indian residents.
• If it “comprises or contains scandalous or obscene matter”.
• If its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950 (12 of 1950).
• The registration of a word as a trade mark which is the commonly used and accepted name of any single chemical element or compound in respect of chemical substances or preparation is prohibited. Also, the law prohibits registration of a word which is declared by the World Health Organization and notified by the Registrar as an international non-proprietary name, or which is deceptively similar to such name.
• If an international non-proprietary name is erroneously accepted for registration in respect of pharmaceutical preparations, or if a prohibited or non-registrable trade mark is erroneously accepted for registration, the necessity to revoke/withdraw the acceptance of the application may arise.

Beyond jurisdictional protection of trade marks, Indian courts have taken into consideration factors such as transborder reputation and good will in protecting a trade mark that is used or registered in foreign countries, its reputation in foreign jurisdictions and knowledge and information of the same within the public at large in India due to spill-over of its reputation through travel, the internet, advertisement or any other means.

Indian courts have consistently objected to the unlawful gain or profit from the reputation built by third parties around the world. Further, Indian courts have also objected to passing off of unregistered trade marks, including foreign trade marks.

In Renaissance Hotel Holdings Inc v B Vijaya Sai & Ors., a landmark judgment obtained by Anand and Anand in 2022, the Supreme Court of India held that use of an identical registered trade mark must be restrained through an injunction, regardless of any further investigation required to establish the mark's reputation in India, the likelihood of confusion, or the infringer's honesty of adoption.

The Supreme Court emphasised the importance of honouring the Indian Parliament's intent in passing the Act, which is to promote globalisation, stimulate foreign investment, harmonise trade mark systems, and prevent trade mark misuse.

Similarly, in the case of Alfred Dunhill Ltd v Kartar Singh Makkar, it was found that because the trade name Dunhill had established reputation in the international market, the plaintiff had the right to safeguard that reputation, regardless of whether it was present in the particular jurisdiction.

The registration of a trade mark is valid for a period of ten years and renewable every ten years, in accordance with the provisions of the Trade Marks Act and Trade Mark Rules.

In India, parallel importation is intricately linked to the principle of exhaustion of rights under the Trade Marks Act 1999.

Only if the parallel imported products are materially different from those sold directly can a trade mark owner file suit, including for passing off, falsification and infringement.

Predominantly there are three kinds of trade mark symbols:

• the unregistered trade mark, represented by the letters TM;
• the service trade mark, represented by the letters SM, is typically used by service sector brands; and
• the registered trade mark, represented by the symbol ®.

The TM and SM symbols can be used with a mark by anyone who is claiming rights to that mark, regardless of having an actual trade mark registration in place.

A registered trade mark can be assigned or transmitted with or without good will in respect of all or some of the goods or services for which it was registered. Such an assignment must be recorded in the Trade Marks Register in the case of a registered trade mark.

A licence does not have to be registered with the Trade Marks Registry. However, it is advisable to do so since registering the licence gives the licensee statutory rights of action in the event of violation. There are two types of licences: exclusive and non-exclusive.

Quality control monitoring, trade mark usage, grant, indemnity and termination are clauses that must be included in a licence agreement to ensure that the licensor maintains quality control.

Any person who acquires rights to a registered trade mark by assignment or transmission should apply for registration of the assignment/transmission in the manner stipulated by the Act and Rules.

Furthermore, registering a licence with the Trade Marks Registry is optional.

The Trade Marks law states that if the validity of an assignment is disputed, the TMO has the authority to refuse to register the assignment until the parties' rights are established by a competent court.

The assignment or transmission where multiple exclusive rights would be created in more than one person is restricted, as is the separation of rights on a territorial basis and the creation of rights in various individuals in different parts of India. The TMO, on the other hand, has the authority to allow assignment if it is considered to be in the public interest.

Where there is an assignment without good will of business, it will not take effect unless the assignor obtains directions of the TMO and advertises the assignment as per directions. Furthermore, certification trade marks can only be assigned subject to consent of the TMO.

Before recording an assignment that involves the transmission of money outside of India, the consent of an authority specified in any law for the transmission of money overseas must be produced.

The Trade Marks Act of 1999 made a significant change by allowing an unregistered trade mark to be assigned or conveyed with or without the business's good will.

The Trade Marks Act 1999 does not need the filing of a document that creates trade mark security. A procedure or precise form for documenting a security interest, such as a mortgage, is not specified under the Act. However, if necessary, a document with a simple cover letter can be filed with the TMO for evidentiary purposes. If the owner of the trade mark under the security or charge changes, the change must be registered with the TMO. If no trade mark application has been filed or no trade mark registration has been secured in India, no papers are required.

It is usually a better practice to submit the paperwork with the Registrar of Companies as part of board resolutions authorising the creation of security or vested interests. In fact, there have been many cases in India where banks have afforded advance money on the basis of the creation of security interest in a trade mark.

In India, ownership of a trade mark is determined based on the first-to-use principle, and passing-off of any mark can be asserted regardless of registration status.

Provided a mark lacks distinctiveness, it can nevertheless be registered under Section 9 of the Trade Marks Act if it has acquired distinctiveness and/or a secondary meaning through usage.

In India, the CGPDTM controls the trade mark registrations and the registered trade marks. 

On its website, the Trade Marks Registry offers a free online trade mark search. All trade mark applications submitted to the TMO in India, including all registered, applied, challenged and expired trade marks are included in the database.

Although it is not required, conducting a trade mark search before applying to register a trade mark is advisable. Accessing the online trade marks database, as well as Registrar of Company records, domain searches and a basic internet search, can be used to do trade mark searches in India for word marks and device marks.

In accordance with the provisions of the Trade Marks Act and Trade Mark Rules, the registration of a trade mark is valid for a period of ten years and renewable every ten years.

A trade mark registration renewal application can be filed at any time during the six months prior to the registration's expiration or last renewal validity. It is also possible to renew after the validity period has expired and within six months after the expiration date.

It is further possible to restore a trade mark after six months but before one year from the validity date of the registration.

At the outset, a trade mark as a whole cannot be changed; any change will need to be covered under a completely new trade mark application. Furthermore, the trade mark's list of goods and services can be limited, but it cannot be extended.

Updating a trade mark application is only permitted if the business's name or address changes, or if there is a change in the brand's use or ownership, which occurs frequently in the case of a collective trade mark.

Any natural person, legal person or other organisation that claims to be the owner of a trade mark can apply for trade mark registration.

According to the definition of a "trade mark", a mark is registrable if it is capable of being represented graphically and of distinguishing the goods or services of one party from those of another. This can include the shape of the product, its packaging, and a colour or colour combination. If the mark is in the form of a label or device, at least one clear print of the mark would be required.

An exclusive number and a date are assigned to a trade mark application after it is submitted. It is taken in turn and analysed based on the priority of filing. The examination process includes assessing inherent registrability, acquired distinctiveness and prior rights. If no objections are raised, the trade mark is published in the Trade Marks Journal in order to invite public opposition. The registration certificate is issued if no objections are received within four months of the publication.

The following information and documentation must be submitted in a trade mark registration application:

• the applicant’s name and address;
• the state or country of incorporation;
• a description of the trade mark;
• a representation of the trade mark;
• a list of the relevant goods or services;
• the power of attorney;
• the dates of first use – if use is claimed, an affidavit of use and documentary evidence must be filed electronically;
• a statement of intention to use;
• the official filing fee;
• a priority claim and documents, where priority of an earlier application is claimed; and
• if the applicant is not domiciled in this jurisdiction, a local service address must be provided.

An agent filing to register a mark on behalf of the owner requires a simple executed power of attorney stamped under the Stamp Act 1899. Multi-class trade mark applications are allowed in India.

A trade mark can be registered on a "proposed-to-be-used" basis.

There is no requirement for the mark to have been used in India to make it eligible for registration in India. If, however, use of the trade mark is not commenced for a period of five years, it can be a ground for removal of the trade mark from the Register of Trade Marks.

Where a person claiming to be the owner of several trade marks in respect of like goods/services – which, while substantially resembling with each other in the material particulars thereof, yet differ in respect of matter of a non-distinctive character which does not substantially affect the identity of the trade mark – seeks to register those trade marks, they may be registered as a series in one registration.

A trade mark can be denied registration under Section 11(1) of the Trade Marks Act 1999 if there is a likelihood of public confusion with an earlier trade mark, including the likelihood of association with the earlier trade mark, and if any of the following relative grounds (based on prior rights) apply:

• the mark is identical to or comparable to an earlier trade mark in the same or similar goods or services sector; or
• the mark is similar to an earlier trade mark in the same or similar goods or services sector.

However, one way to overcome such objections on prior similar marks in the register is by obtaining consent from the proprietor of the cited mark(s).

Third parties are not allowed to file observations during the registration process, but they can file oppositions once the mark is published in the Trade Marks Journal, within a period of four months. This opposition proceeding can only be filed before the TMO and cannot be taken to the court directly. If the opposition is successful, the registration of the trade mark will be refused.

A notice of opposition to the registration of a trade mark may be filed by "any person" regardless of any commercial or personal interest in the matter or a prior registered trade mark owner, on absolute or relative grounds. The question of bona fides of the opponent does not arise.

A correction of any errors in the application of any amendment in the application is permitted by the Trade Marks Act 1999 and Trade Mark Rules 2002. However, no request for correction/amendment shall be allowed which seeks substantial alteration in the application for registration of a trade mark.

The Trade Marks Act 1999 facilitates the provision of filing a division application to the applicant.

This request to divide the trade mark application can be made by the applicant by filing form TM-53, following which each divided application is treated as separate application, with the same filing date. A separate new serial number is allotted to the divided application and they are linked by cross-reference with the initial application.

The Trade Marks Act 1999 enumerates numerous offences in relation to falsifying and falsely applying a trade mark, making or possessing instruments for falsifying trade marks, applying false trade descriptions and so on. The punishments for these offences vary, but the maximum punishment can be as severe as imprisonment for up to three years, with or without a fine.

The Trade Marks Office can object/refuse an application on either absolute or relative grounds.

Absolute grounds, which disqualify a mark from being registered (according to Section 9, Trade Marks Act) include:

• the mark is not distinctive;
• the mark is descriptive of associated goods and services;
• use of the mark has become customary and is bona fide use in established practices;
• the mark is deceptive and will cause confusion;
• use of the mark can offend the religious views of persons in India;
• the mark contains obscene or scandalous elements;
• the shape of a mark is a result of the nature of the goods themselves or is required for functional use.

Relative grounds for refusal of registration (according to Section 11, Trade Marks Act) include:

• deceptive similarity of the mark in question with the opponent's registered mark;
• similarity of the mark in question with a mark which has prior use;
• adoption of the mark in bad faith.

In order to overcome Trade Mark Office objections raised under Section 9(1), the applicant may submit that the mark has acquired a distinctive character by virtue of its prior use. The use of a trade mark must be established by adequate evidence.

Objections raised under Section 11 can be overcome by the applicant by: 

• removing the conflicting goods/services by way of amendment;
• obtaining consent from the proprietor of the cited mark(s) under Section 11(4);
• filing evidence to establish honest concurrent use to secure registration under Section 12;
• securing rectification of register excluding such goods/service of the same description from the specification of the cited mark, under Section 57;
• dividing the application and allowing the objections-free part of the application to proceed further.

The appeals from the Registrar’s orders will have to be filed before the respective High Courts where the Registrar’s office is situated – ie, at Mumbai, Delhi, Ahmedabad, Kolkata or Chennai.

India is a signatory to the WIPO Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 1989 ("Madrid Protocol").

The applicant must be an Indian national, domiciled in India, or have a real and effective business or commercial establishment in India in order to obtain an international trade mark registration in India.

Furthermore, the applicant must have an application for a national (Indian) trade mark or a trade mark registration with the Indian TMO. The international application will be based on this national trade mark application/registration.

The opposition window remains open for a period of four months from the date of advertisement of trade mark application in the Trade Marks Journal. This time period cannot be extended under any circumstance.

While there are no specified grounds of opposition under the statutory law, but an opposition is broadly based on absolute or relative grounds as stated under the Trade Marks Act 1999.

Besides this, an opponent could also raise objection with regard to the proprietorship of the trade mark opposed, prohibitions contained in Section 13, absence of consent in writing in Section 14, et al.

Any person may give a notice of opposition to the registration of a trade mark, regardless on the opponent having any commercial or personal interest in the matter or a prior registered trade mark owner. The question of bona fides of the opponent does not arise.

The official government fee to file an opposition against any advertised mark prescribed fee is INR2,500. The opponent can file the notice of opposition with the help of an agent whose fee would depend on a case-to-case basis. The fee of a professional ranges between INR60,000 and INR80,000 (approximately).

Once a notice of opposition is filed, the procedure is as follows:

• the TMO will serve a copy of the notice to oppose to the applicant within three months of receiving the notice to oppose;
• following the service of the notice of opposition, the applicant is given two months to file a counterstatement outlining its position in order to overcome the grounds of opposition;
• the applicant's trade mark is deemed abandoned for non-prosecution if it fails to file a counterstatement within two months of receiving the opposition;
• alternatively, post-filing of the counterstatement, the opposition will proceed to the evidence stage;
• upon completion of the evidence stage, a hearing notice date is generated and, after hearing the parties and considering the evidence, the TMO then gives its verdict on whether the trade mark is accepted for registration or refused.

If the parties are not satisfied with the TMO’s decision in opposition proceedings, then the decision can be challenged by either of the parties by filing an appeal before an appropriate court.

There is no statutory limitation or time period within which a revocation/cancellation action must be filed.

A revocation/cancellation of a trade mark can broadly be filed under the following circumstances:

• non-use – under Section 47, a trade mark which is not used within five years three months of its registration becomes liable for removal, either completely or in respect of those goods or services for which the mark has not been in use;
• contravention of provisions – under Section 57, revocation/cancellation can be commenced against a trade mark on the ground of any contravention or failure to observe the conditions entered on the register, or by absence or omission from the register of any entry or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register.

Any aggrieved person may make an application before the TMO or appropriate civil court for removal of a registered trade mark or for cancelling the registration of the trade mark and for rectification of the Register, as such.

Person aggrieved are generally persons who are in some way or another substantially interested in having the mark removed from the register, or persons who would be substantially damaged if the mark remained of the register, perhaps as it would affect their own rights in a trade mark or any like reason. Hence, in a cancellation/revocation petition, the person aggrieved needs to file a statement of case establishing the reason behind the petition.

An application for cancellation/rectification of a registered trade mark can be filed before the TMO or the appropriate civil court in the prescribed manner and with the requisite fee.

A partial revocation/cancellation of a trade mark application is also possible in certain cases. For instance, if the registration of a trade mark covered a wide specification of goods and it is found that the trade mark has been actually used only in relation to some of those goods, it is open to the TMO to require the specification of goods or services for which the trade mark was registered to be rewritten in order to achieve the required degree of rectification.

There is no explicit provision for amendment given in revocation/cancellation proceedings. However, in case of a partial revocation/cancellation petition – as explained in 6.5 Partial Revocation/Cancellation – amendment to limit the specification could be directed.

Under Section 124 of the Trade Marks Act, the defendant in an infringement suit can seek a stay of the infringement proceedings. For this, the defendant must contest the registration of the mark that is the subject of infringement proceedings in order to obtain a stay.

If any trade mark is registered without any sufficient cause (ie, if registration was obtained by fraud or misrepresentation of facts or the mark registered was similar to an already registered trade mark), then cancellation proceedings can be initiated for the impugned mark under Section 57 of the Trade Marks Act 1999.

The Limitation Act 1963 sets out the statute of limitations for filing infringement actions.

In most civil cases, the statute of limitations runs for three years from the date of the first breach of rights. An infringement proceeding, on the other hand, necessitates the use of a deceptively similar mark by the defendant. Because each instance of usage of such a mark gives rise to a new cause of action, the three-year limit does not apply in such cases (Timken Company v Timken Services Private Ltd, 2004 (28) PTC 121 SC).

Based on the level of infringement, various strategies could be devised on a case-by-case basis, which could include obtaining and executing legal proceedings, serving the opposite party with cease-and-desist notices, and/or initiating pre-litigation mediation proceedings.

The trade mark owner can pursue infringement actions or passing off in the competent court for civil relief such as:

• an interlocutory, temporary or ad interim injunction;
• a permanent or perpetual injunction;
• a Mareva injunction;
• an Anton Piller order;
• a John Doe order;
• damages or accounts of profits; and
• delivery up and destruction.

Criminal and administrative reliefs are also available under the Act.

Section 29 of the Trade Marks Act provides an exhaustive list of situations in which a registered mark can be infringed. Similarly, unregistered trade marks are protected as part of India's common law regime. An action for passing off can always be instituted against the misuse of an unregistered trade mark.

Section 27 of the Trade Marks Act specifically reinforces this common law remedy by stating that the right to invoke a claim for passing off remains undisturbed by the statute.

A trade mark infringement action can be initiated by either the registered proprietor or the registered user of the trade mark.

Primarily, the registered proprietor of a trade mark has the supreme right to institute lawsuits for infringement against third parties in its name.

Further, an entity recognised as having the right to file infringement lawsuits is a registered user of a trade mark. A registered user can file a lawsuit in its own name, subject to an agreement with the registered proprietor.

A registered user's status must be documented by the filing of a joint application by the user and the proprietor (Section 49, Trade Marks Act).

The exclusive or non-exclusive licensee's status as a registered proprietor will not be recognised if they do not register with the TMO.

India's legal system permits representative/class actions. If the parties with the same cause of action are numerous, such parties may recommend a representative or representatives to participate in the action.

A registered trade mark holder can institute a lawsuit and claim a joint cause of action, which includes a claim for infringement, as well as passing off/unfair competition.

There is also a new procedure in India, wherein, if a trade mark is pledged or there are NLCAT/bankruptcy proceedings going on against a proprietor, then a consortium of lenders can take action.

While there are no mandatory requirements before initiating a lawsuit, issuing a demand letter/cease and desist notice to a suspected infringer might assist the infringement without resorting to litigation, thus accelerating the process.

Before taking action, it is also a good idea to perform necessary investigations.

Section 142 of the Trade Marks Act, on the other hand, protects a person from unjustified and groundless threats of infringement by allowing courts to declare that the claims (threats) of infringement and breach of rights are unjustified and groundless.

The Indian legal system does not employ a jury system. Judges adjudicate all issues, from the issuance of ex parte orders to the ultimate decision.

In general, the stages of a trade mark infringement proceeding are the same as those of any civil commercial litigation:

• ex parte orders and filing/service of summons to the opposite parties;
• both parties must file pleadings (written statement, replication, responses to applications, etc);
• interim application arguments (including application seeking injunction);
• the framing of issues that parties must prove during trial;
• trial;
• the closing arguments.

At the court of first instance, a single judge oversees all phases. However, in order to alleviate the load on judges and clear the backlog of ongoing cases, the court might appoint commissioners (who are usually former judges) who can help ensure a smooth trial.

In India, lawsuits for infringement and passing off, among other claims, can be filed before District Courts and cannot be heard in any court lower than a District Court.

Further, a suit relating to trade mark dispute can also be brought before a High Court having original jurisdiction (ie, the High Courts of Delhi, Bombay, Madras and Calcutta).

Legal practitioners (registered under the Central Advocates Act 1961) or registered trade mark agents can represent parties. Parties can also present their cases in person (Section 145, Trade Marks Act).

The development of trade mark law in India is heavily inspired by judicial pronouncements. High Court decisions (with appellate and writ jurisdiction) bind lower courts in their respective jurisdictions and are an important source of trade mark law. Decisions of the TMO also have a major role to play.

Section 142 of the Trade Marks Act protects a person against groundless threats of infringement by enabling courts to declare that the claims (threats) of infringement and violation of rights are unjustified and groundless.

As with other trade mark policies, the enforcement of trade mark counterfeiting laws serves to safeguard potential consumers. The Customs Act of 1962, read with the Intellectual Property Rights (Imported Goods) Enforcement Rules of 2007, make it illegal to import goods that infringe on intellectual property rights.

Because counterfeit goods are intrinsically prohibited under the Customs Act, they have the authority to halt the clearance of goods on their own initiative, as well as where there are prima facie evident or reasonable grounds to believe that the import of specific goods may infringe on intellectual property rights.

Trade mark counterfeiting is not defined or addressed in the Trade Marks Act of 1999. However, Section 102 of the Act, which deals with "falsifying and falsely applying trade marks", covers such counterfeiting.

In addition to trade mark infringement and passing off activities, a trade mark owner may seek criminal action against trade mark counterfeiting (civil actions). Sections 103 and 104 of the Trade Marks Act of 1999 make it illegal to use and sell goods and services under false trade marks. The sentence might range from six months to three years in prison, with a fine of not less than INR50,000 but not more than two lakh rupees.

Further, even a Quia timet action can be taken against counterfeits to restrain them in case of an anticipated risk.

In a landmark decision, with effect from April 2021, the country abolished the Intellectual Property Appellate Board (IPAB) and transferred jurisdiction of adjudicating appeals to the High Courts. Subsequently, the Delhi High Court formed a dedicated IP Division to formalise and hear IP matters that had been pending before the IPAB.

Delhi High Court created the Intellectual Property Division to deal with matters relating to intellectual property rights, with which the aggrieved parties can file their proceedings.

The owner of a descriptive mark must be able to demonstrate that, while the word in question is descriptive in the genuine sense, it has come to be exclusively associated with the brand/proprietor. This is simply because courts have established a line in the sand about when a descriptive phrase actually acquires distinctiveness.

For instance, Delhi High Court – in a case of Peps Industries Private Limited v Kurlon Limited MANU/DE/0832/2020 – held that the mark NO-TURN in relation to mattresses is descriptive, and the defendant is rightly using the same in a "non-trade mark" sense. Based on such observations, the Court refused to restrain the defendant from using the NO-TURN mark.

The Trade Marks Act, Section 29, gives a comprehensive list of scenarios in which a trade mark can be violated. One of the essential requirements of infringement is that the infringing mark is used in the course of business by a third party.

Further tests for infringement include the following:

• use of an identical or deceptively similar mark on goods or services which are the same as those covered by the scope of the former trade mark's registration;
• use of an identical or similar mark on goods and services that are identical or similar to the goods/services associated with the registered trade mark, in a way that is likely to confuse the public into thinking that the original mark and the offending mark are associated with one another;
• use of a mark, even in relation to goods or services which are not covered in the scope of the registration, provided that the registered trade mark has a reputation in India – the reputation also must be such that misuse by the third party denigrates the distinctiveness of the mark;
• use of mark, or a part of the mark, as part of the corporate name/trading name of an entity.

The following can all be grounds for a trade mark case:

• actual infringing use of the mark, including use on business paper or packaging material;
• likelihood of passing off;
• threat of use or passing off;
• advertising, including online advertising through an interactive website;
• import or export of infringing goods;
• infringement by use in a company or firm name; or
• adoption of infringing domain name, key words, meta tags.

A trade mark registration establishes a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration.

Defences available against infringement claims include the following:

• delay and laches;
• acquiescence;
• honest and good-faith adoption and use;
• differences in goods and services;
• the nature of the product;
• pricing; and
• the absence of confusion or deception.

In accordance with the Commercial Courts Act 2015, trade mark litigation is governed by the same rules that apply to commercial disputes.

At the time of filing the suit, all essential documents must be filed with the claim (Order XI, rule 1, Code of Civil Procedure 1908 (Civil Procedure Code)). Within 30 days of the suit's filing, additional documents may be filed. Unless the court expressly permits it, documents that are not filed at this stage cannot be relied upon at a later level (Order XI, rule 4, Civil Procedure Code).

In a civil suit for infringement, a plaintiff can seek to obtain information, documentation, and other material from the adversary.

A party may request (Code of Civil Procedure, Order XI, rules 2,3 and 5):

• interrogatories – litigants can issue interrogatories to third parties with the court's authorisation;
• inspection – parties have the right to examine any documentation evidence used in the case, and if this is refused then the denying party may lose the right to rely on the document in question;
• document production – any party can demand that a party produce document(s) that are relevant to any issue in the suit, and if certain documents are not produced then the court may draw a negative inference.

There is no statutory regulation or administration of survey evidence. To support their positions on consumer confusion, secondary significance, etc, the parties have relied on survey evidence.

The judge may appoint amicus curiae technical experts or scientific advisers. Such specialists, on the other hand, serve simply as consultants or expert witnesses and are not members of a judging panel.

Survey evidence should not be relied upon unless interviewees are cross-examined (PP Hamsa v Syed Agencies (1990 (2) KLJ 555)).

Survey evidence assists the court, particularly during preliminary/interlocutory injunction proceedings (Ayushakti Ayurved Pvt Ltd v Hindustan Lever Ltd 2004 (28) PTC 59 Bom).

Criminal Remedies

The Trade Marks Act 1999 criminalises certain actions that violate rights in a trade mark and provides for stringent remedies against such offences, for example:

• fabricating and falsely applying a trade mark;
• manufacturing or having instruments for falsifying trade marks;
• applying a fake trade description; and
• applying a false indication of country of origin.

Trade mark infringement is a non-bailable offence and it is punishable with imprisonment of at least six months, extendable to three years; it can also be imposed with a fine of up to INR200,000.

Administrative Remedies

Opposition to a similar mark, rectification of a registered mark, and recordal with Customs to prevent the import or export of products carrying the infringed trade mark are among the administrative remedies available.

Investigation fees, attorneys' fees and expenditures, notarisation fees, translation fees and court fees are all examples of usual costs.

After a first instance decision, litigation costs, including attorneys' fees, are recoverable. However, there is no guarantee that a party against whom an injunction is obtained will have to bear the expenses of litigation. The court has complete discretion over whether or not to award expenses.

Civil remedies can be pursued by bringing a complaint in a competent court for infringement or passing off. There are several types of civil remedy available, such as:

• a Mareva injunction;
• an Anton Piller order;
• a John Doe order;
• a permanent or perpetual injunction;
• damages or accounts of profits; and
• delivery up and destruction.

Preliminary or temporary relief is available and is frequently requested in trade mark infringement lawsuits.

The Code of Civil Procedure (1908) (Order 39, rules 1 and 2) makes it easier to file an application for an injunction prohibiting a defendant from using a mark that infringes on a claimant's rights, for example. A claimant must show:

• a prima facie case;
• irreparable harm and injury to its activities in order to obtain a preliminary or temporary injunction (good will, market share, etc) – the injury must be severe enough that monetary compensation from the defendants would not be enough to compensate the victim;
• the balance of convenience dictates that issuing an injunction is more equitable than refusing to do so.

The following are defences available to infringers:

• delay and laches;
• acquiescence;
• honest and good-faith adoption and use;
• distinctions in products and services;
• the nature of the product;
• pricing; and
• the absence of confusion or deception.

Various factors are used to evaluate and provide monetary remedies. In general, damages are granted in trade mark litigation in one of three ways, as detailed below.

• Actual/compensatory damages are based on the actual loss suffered/actual profits gained as a result of the infringement and must be proven by the claimant.
• Punitive damages, as defined under the Act, are issued in the form of fines. Where the court decides that the amount of compensatory damages awarded is not appropriate to the magnitude of the defendant's actions, punitive damages are issued. In such cases, the court awards damages in addition to compensatory damages that have previously been calculated.
• Token/minor damages are awarded in the event that a dispute is resolved quickly.

In cases of impoundment or destruction of infringing products, the infringer is directed to deliver the infringing material to the claimant or destroy it in the presence of a local commissioner (appointed by the court) or by the claimant themself.

In fact, Indian courts routinely pass Anton Pilar orders, which are aimed at seizing infringing product at the defendant's premises.

Court expenses, length of arguments, duration of trial, use of senior lawyers, and other factors all affect costs.

After a first instance decision, litigation costs, including attorneys' fees, are recoverable. However, there is no guarantee that a party against whom an injunction is obtained will have to bear the expenses of litigation. The court has complete discretion over whether or not to award/impose costs of the proceedings.

Courts sometimes require parties to give an estimate of costs they intend to incur throughout trial and subsequent phases of the case, since costs play such an important role in defining the parties' strategy to litigation. This also makes determining the amount of fees to be paid easy for the court.

Even if a defendant has not been given prior notice of the suit or the claimant's grievance, a temporary ex parte injunction can be granted (Section 135(2) of the Trade Marks Act).

Claimants obtain ex parte injunctions only in exceptional situations and not as a matter of right. The court must be convinced that the claimant's interests will be severely harmed if the request is denied. The behaviour of a claimant, on the other hand, is a key aspect in assessing whether or not an injunction can be granted. Temporary injunctions are likely to be denied if the claimant takes too long to allege a violation of its rights.

Generally speaking, if a defendant prevails in the trade mark infringement case, the court will declare that the defendant does not constitute trade mark infringement. If the defendant would like to request for compensation from the plaintiff, the defendant shall file a counterclaim or initiate new litigation for compensation.

A prevailing defendant can avail themselves of reimbursement of court proceedings at the court’s discretion. A counterclaim for harassment or defamation for loss of good can also be initiated, subject to the facts of each individual case.

Customs officers can enforce IP rights over imported goods under the IP Rights (Imported Goods) Enforcement Rules 2007. The Rules provide a step-by-step process for right holders to register their IP with customs officials. This registration imposes an administrative duty on Customs to protect the right holders against violation of their IP rights.

Rights holders can also seek remedies aimed at preventing unlawful product imports and exports. The Customs Act 1962 recognises the government's authority to prohibit the import and/or export of products in order to preserve rights protected by the Trade Marks Act.

In accordance with the TRIPS Agreement, India has also established the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007, which authorise customs officers to enforce IP rights over imported goods.

Remedies range from civil to criminal and administrative.

In 2016, the Trade Marks Office's CGPDTM launched a pilot programme to deal with oppositions and rectification processes, with the goal of settling existing issues through mediation/conciliation.

A referral to the TMO can be made, which would then assign the matter to the relevant authority for mediation. Broadly speaking, mediation can be employed in the following situations:

• disputes over the licensing of IP rights;
• disputes over infringement of IP rights;
• prosecutions for trade mark opposition and invalidation;
• disputes over trade mark ownership.

Although most matters involving intellectual property rights are addressed through court action, alternative dispute resolution mechanism is also becoming an effective and appropriate method of settling IP disputes.

Mediation has become a popular alternative since it gives both parties' interests equal weight and gives them control over the settlement process. Other benefits include confidentiality and a faster resolution without jeopardising either party's reputation.

The Delhi High Court Mediation Centre has been proactive in resolving disputes through mediation. An example of settlement through ADR was witnessed in the case of Bawa Masala v Baba Masala Co.Pvt Ltd, where disputes were resolved via mediation.

Under Section 124 of the Trade Marks Act, the defendant in an infringement suit can seek a stay of the infringement proceedings. To do this, the defendant must contest the registration of the mark that is the subject of infringement proceedings. The alternatives are as follows.

• Pre-suit challenge: the suit must be stayed if the defendant began the rectification processes before the infringement suit was filed.
• Post-suit challenge: if the defendant intends to pursue rectification after being sued, it must first satisfy the court (on a prima facie basis) that the registration should be invalidated. Once the court is satisfied that the challenge to validity has been established, the court will issue a stay of proceedings and allow the defendant to commence rectification within a defined timeframe.

Within three months of the TMO's rejection order being issued, an appeal must be lodged with the competent court of jurisdiction.

For trade mark proceedings, the District Court is the court of first instance. An appeal therefrom lies to the High Courts of relevant jurisdiction; as a last resort, an appeal by way of special leave petition can be brought before the Supreme Court wherein a substantial question of law is concerned.

In the High Courts, questions of law or fact can be taken up; in the Apex Court, only a question of law can be raised.

In India, the TMO is contacted prior to the registration of a copyrightable artistic work that can also be used as a trade mark for certification that there are no trade marks on record that are similar to the copyrightable artistic work.

The artistic work copyright can be filed for registration only when the TMO confirms and certifies that there are no similar or identical trade marks on record. Likewise, a trade mark cannot be registered if it is in conflict with a copyrighted work.

While India's trade mark and copyright regulations take into account potential conflicts, there is currently no practical mechanism either established by trade mark law or used by trade mark authorities in India to examine copyright records while assessing trade mark applications.

When it comes to two-dimensional elements and features of a product, the conflict between design and trade mark law is non-existent. However, for the protection of a product's shape and three-dimensional arrangement, the lines between trade mark and design law tend to get a little blurry.

A product's shape and aesthetics can be protected through design registration. Other aspects (eg, larger trade dress, layout and placement of trade marks on the goods) that are not claimed in the design registration can be protected under a trade mark or trade dress.

Once the design registration has expired, the complete design can be claimed as a trade mark/trade dress and appropriate legal action can be taken by the owner, assuming the consumer association and good will tests have been met. This is due to the fact that common law does not grant a product monopoly. Instead, it simply recognises and maintains the monopoly that already exists on a product's shape and aesthetics.

Personality rights are not recognised as distinct legal rights in India, but they have been recognised through the Right to Privacy and the Right to Publicity, the elements of which (character likeness, name, setting, event, etc) may be protected under various statutes such as the Copyright Act 1957 and the Trade Marks Act 1999.

Commercial use of one's name and likeness is protected in India under the umbrella of personality rights, as well as trade mark and copyright laws. Several famous actors and athletes, including Dilip Kumar, Sachin Tendulkar and Kapil Dev, have registered their names as trade marks to protect them from commercial abuse.

One of the primary objectives of the IP law regime is to safeguard against unfair competition, which is defined as any act of competition that is contrary to fair practices in industrial or business affairs.

The Competition Act of 2002 and the Consumer Protection Act of 2019 are two Acts that ensure fair competition in Indian markets by safeguarding consumers' rights against exclusive IP rights holders.

Unfair trade practices include trade mark infringement, passing off, and even disparagement. Trade mark law is a part of the wider arena of unfair trade practice. As a result, trade mark law and unfair trade practice must be viewed as complementary to each other rather than conflicting.

With the upcoming digital switch to the metaverse, NFTs, cryptos, etc, it is imperative that there is transition in the existing trade mark classifications. It will be interesting to see how the next edition of the Nice Classification handles these new intangibles.

As detailed in 8.1 Special Procedural Provisions for Trade Mark Proceedings, in June 2021, the country abolished the IPAB and transferred jurisdiction of adjudicating appeals to the High Courts. Subsequently, the Delhi High Court formed a dedicated IP Division to formalise and hear IP matters that had been previously pending before the IPAB.

The Delhi High Court created the Intellectual Property Division to deal with matters relating to intellectual property rights; aggrieved parties can now file their proceedings with the aforementioned Division.

The Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules 2021, regulate online intermediaries. The Rules stem from the Information Technology Act 2000.

Online intermediaries are granted safe harbour protection under Section 79 of the Act if they comply with specific obligations and due diligence requirements set forth in the Rules. If these Rules are violated, or if the intermediaries choose to act in defiance of a court or government order, they lose their safe harbour protection and become liable, along with the true source of the infringing content.

The Guidelines mandate that all intermediaries exercise due diligence, which includes due diligence in the event of a trade mark or proprietary rights infringement.

Further, in case a claim of infringement is brought to an online intermediary’s knowledge, the Rules require to remove any restricted/infringing content within 36 hours of obtaining actual knowledge of its existence.

In general, adopting/using a generic or deceptively similar name is discouraged for a brand because it creates confusion among stakeholders.

Using deceptively similar names without first conducting a trade mark clearance search could violate the rights of the rightful proprietor, cause market confusion, and amount to piggy-backing on another brand's good will.

Furthermore, other factions are increasingly being included in the protection of trade marks, such as the registrar of companies, which has regulations prohibiting the registration of company names that contradict with trade mark owners' previous rights. The procedure to be followed in this regard is already laid forth in the Companies Act.