What remedies are available against trademark infringement under Section 29

Question

Someone is selling counterfeit products using a mark identical to mine and I want to know what legal action I can take. What I am unsure about is the procedure — where the application goes, what it costs, and how long trademark infringement suit matters usually take. A plain explanation of the steps, in order, would help more than a general answer.

MyVakeel Legal Desk · Accepted Answer

The law that applies to trademark infringement suit here is Trade Marks Act, 1999, Section 29 and Trade Marks Act, 1999, Section 135. The detail below matters, because Trade Marks Act, 1999, Section 29 draws the line differently depending on what your documents show.

Section 29 of the Trade Marks Act, 1999 sets out several forms of infringement, including use of an identical or deceptively similar mark on identical or similar goods, use that takes unfair advantage of a well-known mark's reputation, and use of the mark as a trade name or on business papers.

Section 135 empowers civil courts to grant reliefs including permanent and interim injunction, damages or an account of profits, and an order for delivery-up of the infringing labels, packaging and goods for destruction or erasure of the offending mark.

Criminal remedies also exist under Sections 103 and 104 of the Act for applying a false trademark or selling goods with a false trademark, punishable with imprisonment up to three years and fine, and the police can act on a complaint under Section 115(4) which is a cognizable offence.

Plaintiffs frequently seek an ex parte ad-interim injunction along with a local commissioner's appointment to seize infringing stock, particularly in counterfeit cases, and courts have granted 'John Doe' or Ashok Kumar orders against unidentified infringers operating through multiple outlets or websites.

What this means for you: 1) Collect proof of the infringing use, samples, invoices and photographs; 2) Issue a legal notice calling upon the infringer to stop use; 3) File a suit seeking injunction, damages and delivery-up before the appropriate district or High Court; 4) Consider a parallel criminal complaint or police action for counterfeit goods.

Where the facts are disputed, what usually decides a trademark infringement suit matter is the paper trail — dated complaints, acknowledgments and written replies under Trade Marks Act, 1999, Section 29. You can post the details on the MyVakeel forum for a practising advocate to review, or book a paid consultation with a Bar Council verified lawyer in intellectual property.