The World Intellectual Property Organisation defines trademarks as:
"Any sign that individualizes the goods of a given enterprise and distinguishes
them from the goods of its competitors."
The history of trademarks dates back to 3000 years ago when the craftsmen of
India used to engrave their signatures on their work before transporting it to
Iran. With the ever-increasing trade in the middle-ages, the use of signs to
distinguish goods expanded.
The importance of Trademarks cannot be emphasized much in this era of
industrialization. The market-oriented economy allows the competing to offer the
world a catena of products under the same category. Therefore, it becomes
increasingly important for guiding the consumers to consider alternatives and
make a choice between two competing products. Henceforth, trademarks aid their
owners in advertising their products under their recognition. Trademarks
encourage the owners to establish their identity by maintaining the quality of
products manufactured and sold under their tutelage.
In this era of increasing competitiveness of products, trademark holds prime
importance in terms of distinguishing products. In order to fulfil this need of
distinguishing function for consumers, trademarks should be legally protected.
If trademarks are not protected competitors would use identical signs and
symbols in order to deceive customers. The person so deceived might not realize
that the product being brought is authentic.
However, the person may tend to hold the owner of the trademark responsible for
the deception. Even if at some point, the consumer realizes that he has been
deceived, he would not be in a position to initiate proceedings against the
alleged deceiver. Therefore, it is quintessential that the owners of trademarks
have right to prevent their competitors from manufacturing identical or
confusingly similar products which have a possibility to deceive customers. This
right is called an "exclusive right" of the owner.
The authors, by way of this piece, shall attempt to give a detailed
understanding of Trademark Infringement and the remedies associated thereof
in light of the recent decisions of the Indian Courts. Further, the factors that
require due consideration while deciding the remedies have also been enumerated
in this research project.
This Research Project shall aim to:
The author, by way of this piece, shall aim to answer:
- To analyze the rights conferred to individuals after registration of TM.
- To understand as to what constitutes TM infringement in light of recent
- To comprehend the various remedies available against TM infringement.
- To scrutinize the factors those play an important role while deciding
the appropriate remedy against TM infringement.
- To comparatively contrast the extent of effectiveness of civil and
criminal remedies in instances of TM infringement.
- To evaluate the various challenges faced by Indian Courts in such cases.
Scope And Limitations
- How has the Indian Judiciary applied the various tests surrounding TM
infringement in its recent decisions?
- What is the extent of effectiveness of criminal over civil remedies in
instances of TM infringement?
This research project is limited to the TM infringement and the various remedies
associated to it in the Indian Legal system. The authorities of some other
developed jurisdictions have also been taken into consideration to pose a
comparative analysis and the same have been duly referenced though the analysis
of the provisions is limited to the recent decisions of the Indian Judiciary
alone. The present position of the approach adopted by the Courts has been
enumerated by the authors in light of various recent and landmark judicial and
Rights Conferred To Trademark Owners
The recognition to the concept of trademarks in the Indian Jurisdiction has been
given under Section ["hereinafter", '§'] 2(zb) of the Trademarks Act,
1999["hereinafter", 'The Act']. §.2 (zb) of the Act defines trademark as:
"A mark capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from choose of others and may
include shape of goods, their packaging and combination of colors." The Act
was enacted to comply with the provisions of Trade-Related Aspects of
Intellectual Property Rights ["hereinafter", 'TRIPS'] provisions.
The registration of a trademark bestows the registered proprietor an exclusive
right to use the trademark in relation to the particular set of goods and
services. Any kind of violation of the exclusive right may infringe the
exclusive right of the proprietor, except in certain circumstances. Registration
acts as a whistle-blower to the society, enlightening them that the trademark
has been registered or is under-going the process of registration.
It has been provided in the act that deceptively similar or even identical
trademarks to the ones already registered in association with the same category
of goods cannot be registered again.
The proprietor of a registered trademark has a right to file a civil suit for
infringement of his rights and obtain:
Passing Off Right
- Accounts of profit
The Act gives an unregistered trademark user to prevent others from using a
similar trademark through an action of passing off. The SC has held that "an
action of passing off is available to an unregistered user even against a
registered proprietor." It iterated this in the celebrated case of N.R Dongre v.
Whirpool Corp, wherein the trademark registration of Whirlpool Corporation [WPC]
had lapsed in 1977. Thereafter, WPC filed for renewal of its trademark in 1988.
In the meantime, an Indian trust filed for registration of the trademark
"Whirlpool". Inspite of severe opposition from WPC, the trust got its trademark
registered. However, the SC averred that the mark Whirlpool has been associated
with WPC for long granted passing off rights.
In Cadila v. Cadila
, the Court held that the passing off depends upon
the principle that no one has the right to represent his/her goods as that of
other and misrepresent others. A ma is not entitled to sell or pass off products
under the pretence that the goods are of others.
Position in the United States:
In the United States, it is believed that the passing off action is essentially
a deceptive tactic and no person shall be entitled to claim user or carry on
business under the veil of other. In simple terms, no one is entitled to profit
or gain out of the goodwill and reputation established by the other. Reiterating
this, Lord Oliver in the celebrated case of Reckitt and Coleman v. Borden
 laid down three essential elements for passing-off:
- Goodwill to be owned by the owner of the concerned mark.
- Misrepresentation caused due to the use of mark by the defendant.
- Damage to the goodwill and reputation enjoyed by the plaintiff.
What Constitutes Trademark Infringement?
According to the Black's law dictionary, the term infringement denotes an act
that interferes with the exclusive right of an owner. As per the terms of the
Act, "a registered trademark is infringed if he uses the concerned mark as a
part of his trade name or part of his trade name or, name of his business or
part of the name, of his business concern dealing in goods or services in
respect of which the trademark is registered."
It has been established by Courts that a trademark is infringed when a person
encroaches upon the exclusive rights of the registered proprietor by way of
producing identical or deceptively similar goods or services.
In a suit for infringement, the plaintiff must prove the following:
- He holds exclusive rights over the mark and he is the owner of the
- The defendant in his course of business is using an identical or
deceptively similar mark with that of the proprietor.
- The use of the mark must be related to the goods and services under
which the plaintiff has claimed registration.
With regards to the similarity aspect, the SC laid down a test in the case of
Amritdhara Pharmacy, wherein the Court stated that while determining
similarity between two words, the Court must judge the words on the basis of
their look (visual) and their sound (phonetic). The kinds of goods and services
claimed under the mark must be delved into.
Further, all the surrounding circumstances must be considered if the both the
trademarks are used under similar set of goods and services. Henceforth, if the
Court comes to the conclusion that the use of such trademark is likely to cause
confusion in the minds of the public with respect to the registered mark, the
trademark so claimed should not be granted registration.
Understanding The Concept Of Deceptive Similarity
Deceptively similar marks can be understood as "a trademark created, almost
similar or a look-alike of an already existing mark." Deceptive similarity has
been engrafted under §.2 (h) of the Act. This concept has been widely
recognized across all developed jurisdictions as a ground for trademark
infringement and India has not been left behind.
However, the Indian Trademarks
Act, 1999 does not define or frame the ambit of "deceptive similarity" and the
discretion has been bestowed on the Courts to decide whether the concerned marks
are similar or not. Therefore, it becomes paramount to analyse the stand of the
judiciary with regards to the deceptive similarity of marks.
The Indian Trademark jurisprudence has come a long way in ensuring fair
treatment and due credit to the owners of trademark. This has been brought forth
by a recent case of OM Balajee Automobile wherein the Delhi HC passed an
ad-interim injunction in the favour of the multinational company BMW. In the
instant case, the defendant used the mark DMW to manufacture and sell
automobile, especially e-rickshaws. The Delhi HC averred that the defendant's
trademark DMW prima facie appears to be visually and phonetically similar and
was a dishonest adoption to encroach upon the goodwill and reputation enjoyed by
The advent of COVID-19 brought with itself humongous competition in the market.
With the rapid expansion of the catastrophe the need for getting trademarks
registered in the name of the vaccine/medicine making companies became
paramount. In light of this, a single judge bench of Madras HC in Patanjali
Ayurved Ltd. case
 restrained Patanjali to use the mark "Coronil" as it
was deceptively similar to that of the defendants mark "Coronil-92B".
The defendants shortly approached a Division Bench of the Madras HC contending
that "Coronil" is a generic term which has its roots from coronavirus and there
is no likelihood of any confusion. Therefore, the bench set aside the order of
the single judge on the grounds that there was no prima facie case of trademark
infringement by Patanjali Ayurved Ltd.
The Test Of Likelihood And Confusion
This rule of interpretation was laid by the SC in Cadila. v. Cadila
wherein a suit for injunction was filed the trademark holder of "Falcogo"
against "Falcitab". The term falciwas derived from the disease Falcipharam
Malaria. In the instant case, the Court opined that there exists a likelihood of
confusion between both the marks as they are similarly placed and for similar
set of goods.
Moreover, due to the additional threat of medical negligence due to similarity,
the Court ruled that the mark is deceptively similar. In the instant case, the
Court also laid down the rule of anti-dissection which established that the mark
should be judged as a composite whole and should not be dissected for the motive
of comparison. The rationale behind this rule of interpretation was that an
average consumer would judge the mark in its totality and not in parts.
In the same vein, in a recent case of Sun Pharmav. BDR Pharmaceuticals
wherein Sun Pharma was an owner of the mark "Labebet" since 2009, the defendant
claimed the mark "Lulibet". In this suit for injunction and passing-off, the HC
observed that when considered as a whole the concerned mark is phonetically and
deceptively similar to the already registered mark.
A critical analysis of the above-mentioned judicial pronouncements establishes
that the Courts have abundantly made it clear that there isn't a straightjacket
formula to determine deceptive similarity. The Courts have repeatedly suggested
the subjective nature of deceptive similarity and have averred that it should be
determined in accordance with the matter in hand. This is primarily because the
standard of creativity and originality may largely differ from case to case.
Time Period For Distinctiveness Of Mark
The Act does not provide for any specific time period which would make the mark
distinct of others. However, it has been established through various judicial
precedents. The Delhi HC in a celebrated case of ITC. v. Britannia
held that to acquire distinctiveness it is not necessary for the mark to be
marketed for a number of years. "If the idea is fascinating and captivates the
customers, it can become a hit overnight".
In Consolidated Foods Corporation case, the Court averred that for claiming
proprietorship of a mark, the time period of its existence is irrelevant. In
other words, it isn't necessary for the proprietor to claim user of the
concerned mark for a considerable period of time. Rather, the intent to use the
mark eo instanti can confer right upon such proprietor. There should not be a
straightjacket hard and fast rule of time period for a mark to acquire
In the context of Indian Trademarks regime, the translation cases are being
dealt under deceptively similar marks. In a recent case of Allied Blender and
Distillers v. Govind Yadav, the Court held that the marks "Officers Choice"
and "Fauji" are not deceptively similar. The plaintiff had the mark registered
in 1988 and since then was claiming user of the same. The mark Fauji is a mere
translation of "military officer" and is in the same business as that of the
plaintiff. The Court averred that the expression "officer" refers to a person in
power. However, the expression Fauji denotes a simple soldier. Moreover, the
words were phonetically and visually distinct from each other. Therefore, liable
to be granted registration.
The Delhi HC in Surya Roshni v. ESC
observed that mere translations
of words would amount to deceptive similarity. In the instant case the bone of
contention was between two trademarks "Surya" and "Bhaskar". The Court averred
that mere translations of word do not grant exclusivity or distinction to the
mark as in this case, both are translation of the word "Sun". Henceforth, the
mark is deceptively similar to that of the registered mark and is liable to be
Similarly, in the case of M/s Bhatia Plastics v. M/s Peacock Industries
., two trademarks namely "Mayur" and "Peacock" were held to be
deceptively similar as both of them had their origin from the same bird and were
mere translations of the same.
Trade Dress And India's Emerging Jurisprudence
The emergence or trade dress finds its roots from the very own Hindi proverb,
"Jo Dikhta Hai Wohi Bikta Hai"
. This is to say that product packaging and
visualization play an enormous role in captivating the consumers and drawing
their attention. India lacks any specific provision of trade dress, however,
the passing off rights elucidates upon the protection of trade dress.
The overall appearance and combination should be distinct. In Castrol Ltd. v.
, the defendant used the mark "Lumax Active" similar to that
of the plaintiff "Castrol Active". Moreover, the packaging, colour combination,
design, layout and configuration were similar. The Court ruled that the marks
are not deceptively similar if considered in isolation of trade dress. However,
the moment it is compared in conjunction of trade dress it appears tobe
encroaching upon the rights of the plaintiff by dishonestly using the same trade
Exception To Infringement- The Defence Of Honest And Concurrent Use
The only possible way an identical or similar mark can be registered is by
invoking the defense of honest and concurrent use engrafted under §.12 of the
Act. The law of invoking honest and concurrent use as a defence finds its
roots from the case of Kores Ltd. v. Eshwarsa and Sons
, which laid
down five parameters to be considered whilst checking honest and concurrent use:
- The extent of use of such mark, its quantity, geographical area,
- The degree of confusion likely to be caused in the minds of public
regarding the origin and authentic source of the mark.
- If there exists certain evidences of such confusion.
- The amount of inconvenience caused to the parties if the use of
trademark is approved.
- The honesty of using the trademark.
However, in the Indian trademark regime, there have been dearths of cases which
have been approved out of honest and concurrent use. In Anjali Kumar Goenka
,the Court granted the defense of honest and concurrent use on the basis
of the following contentions:
- The geographical location and limitations of the parties were distinct,
in the instant case being Rajasthan and Delhi.
- Both the parties started claiming user more or less at the same period
- The term "Goenka" formed the part of appellants' trust name.
Remedies Against TM Infringement
With the advancement of industries, confusion with regards to similarly placed
trademark is also increasing. Therefore, there arises a need for a robust regime
with deals with trademark infringement, so that neither the owner nor the
consumers are exploited. Many judicial pronouncements over the years have fairly
established the types of infringement and various remedies bestowed thereafter.
S.29 of the Act, 1999 deals with infringement of trademarks.
The burden of proof is on the plaintiff to show that he holds exclusive rights
over the trademark. The plaintiff must show that he enjoys reasonable reputation
concerned with the mark and there would be a likelihood of confusion in the
minds of the public if both the trademarks are operative. The most crucial thing
which the Court delves in is the degree of similarity between two conflicting
marks. Intention of the defendant, advertisement, purchasing skills of goods and
services among consumers are some other parameters the Court dives into.
Remedy in common parlance is a consequence of an infringement. It can be claimed
both by registered and unregistered marks. In case of a registered mark, it acts
as an action for infringement in a Court of Law whereas in case of an
unregistered mark, it aids in passing of infringement in hands of common law.
The Indian Trademark jurisprudence provides for civil, criminal and
administrative remedies for the persons whose trademark has been so infringed.
- Permanent/Perpetual Injunction:
As the name suggests, permanent injunction depends on the nature of the
suit, when it is to be decreed and is binding in nature to a permanent
- Interlocutory/Temporary/ Ad-interim Injunction:
Under this a specific time frame comes into consideration within which the
Court may pass final orders. A discretionary relief is offered to the
plaintiff prohibiting an action by a party to a lawsuit.
- Mareva Injunction: This is a specific type of interim injunction which
is granted to restrain the defendant from disposing off his assets until the
final order is passed.
- Anton-Pillar Order: This order empowers the plaintiff to search the
premises of the defendant and inspect the documents and articles to ensure
that it isn't destroyed by the defendant.
- John-Doe Order: These orders give powers to search and seize against
- Accounts of profits or Damages: These are the books of accounts of the
defendant which is supplied to the plaintiff in order to monitor the amount
of profits made by the defendant during the infringing period.
- Delivery and Destruction: The infringing goods and related materials are
submitted to the plaintiff for destruction.
Civil remedies are unarguably the best remedies. While the Courts have been
adamant of imposing heavy penalties, the actual impediment lies in recovering
the damages so inflicted.
The complaints seeking criminal sanctions are filed under Sections 103 & 104 of
the Act. It enlists various offences for falsifying trademarks, marking or
possession of instruments for falsifying trademarks etc. The maximum punishment
imposed on a person for violating the above-mentioned provisions is that of 3
The offenses are cognizable in nature and a complaint can be filed at the
Magistrate's Court to seek an order to direct the police to carry out raids and
investigate. The police are not only empowered to investigate and seize
infringing goods but also arrest the accused. It is the responsibility of the
complainant to prove that the infringing products seized are counterfeit and
deceptive in nature.
- 115(4) of the Act lays down the powers of the police regarding search
and seizure of the premises of the alleged infringer. It is to be noted
that the police has to obtain a certificate of opinion from the registrar
which is then binding on the police. Due to the dearth of marks and devices
in the database provided to the Registrar, he is not obliged to give an
opinion to the police. A search warrant can directly be obtained from the
Magistrate under §. 93 of CrPc.
In Sanyo Electric Co. v. State of Delhi the order of search and seizure by
the Magistrate was challenged. It was contended that the order passed tossed
aside the provision laid down in Section 115 (4) which lays down the procurement
of opinion from the Registrar. However, the Delhi HC turned down the contention
and averred that the search warrant obtained under §.93 does not oblige the
police to follow the proviso stipulated in §.115 (4) of the Act.
The various administrative remedies bestowed under the Act are discussed below:
- 18(1) of the Act prescribes the requisite procedure and compliances
during the registration of a mark. Once the mark is applied before the
concerned registry, the objections are invited under different sections of
the Act. The proprietor who seeks the mark to be registered is then obliged
to submit a response to the examination report. Application of the applied
mark is afloat in the gazette for a period of four months beyond which it
shall be qualified for registration, provided there is no objection from any
other trademark holder.
- Opposition against a Similar/ Deceptively Similar Mark:
Once the application is filed before the registry for registration of the mark
under §.18(1) of the Act, the mark is uploaded to the official gazette for
objections by third party. Any person who believes that the mark encroaches upon
his exclusive right of the mark is entitled to file an objection within four
months. Thereafter, evidences are submitted by both the parties based on which
the registry takes the decision of refusal or registration of the mark.
The test for deceptive similarity has been broadly dealt upon by the SC in James
Chadwick case. The Court held that in order to ascertain deceptive
similarity between two marks they needn't be placed side by side, rather by
asking itself the question whether the defendants mark would be remembered by
persons of average intellect and memory with its usual imperfections. The
defendants mark may either resemble the plaintiffs mark visibly or
- Rectification of a Registered Mark: 
The party so aggrieved may file for rectification, removal or cancellation of a
mark, if the person believes that the mark is inappropriate and encroaches upon
his exclusive right of the mark. The mark may under such scenario be either
inoperative, wrongly registered, expired or is registered without prior
comparisons with the pre-existing marks of similar nature. In such a case, the
Act provides for the procedure to rectify an omission or an error.
The Intellectual Property Appellate Board ['hereinafter', IPAB], in Elango
Himachalapathy v. Rank Xerox, rejected four out of a total number of seven
rectification application filed by Elango against the registration of the mark 'XEROX'. Elango submitted that the term
'XEROX' is used in common parlance is
therefore ineligible for registration and should be struck off from the
register. However, the IPAB observed that the mark 'XEROX' has been registered
since 2003 and is renewed and used with regular effect.
Moreover, it has been
aggressively protecting its mark by advertisements such as, "If you use XEROX
the way you use Zipper, our trademark would be left wide open" and "If you use
XEROX the way you use Aspirin, we get a headache". Therefore, the IPAB held
that, although the term XEROX is used in common parlance, however, the
corporation was the owner of the mark based on its regular use and renewals.
Henceforth, the application for rectification was turned down by the IPAB.
- Import or Export of Goods bearing Infringed Trademarks:
§.11 of the Customs Act gives power to the Central Government to impose
restrictions and prohibit the export and import of goods of infringing
nature. The goods which are of infringing nature are liable to be
confiscated and the customs officer has the power to raid any premise, conduct
an x-ray of any person and search and seize any goods which if he has a reason
to believe is contraband. The power or arrest has also been given to custom
officers when counterfeit is found.
Examining The Effectiveness Of Civil Remedies In Tm Infringement In Light Of Challenges Faced By The Indian Judiciary
The scope and extent of civil remedies, granted by the TM act, has been
discussed at length by the authors in the former parts of the paper. The TM
holder may seek injunction, damages, and account of profits, custody of goods,
etc. after choosing the path of civil remedies.
It is true that the civil remedies are most chosen by the TM holders in cases of
infringement. While they do offer certain advantages over criminal remedies,
they are not free from defects and disadvantages. Such defects occur both at
the execution/implementation as well as the final level of attaining the desired
The objective of remedies is to provide a fair deal to the holder so that his
earlier position is restored. Damages are generally paid by the infringer to the
TM holder in order to compensate him/her the loss that he had suffered due to
the said infringements. Damages thus constitute an effective civil remedy when
the losses suffered are in the nature of economic losses. However, in cases
where the loss is not of purely economic nature and constitutes other factors,
damages may not seem as a fruitful remedy to restore the earlier position of the
holder as if the infringement never happened. Serious harm to reputation or
goodwill, inconvenience, and mental agony are few such instances.
Another important aspect of civil remedies include grant of injunction by the
courts in cases of TM infringement. It is at the Court's discretion to allow or
refuse to grant an injunction keeping in mind the circumstances of the case.
When a holder can be sufficiently compensated by way of damages, injunctions may
be refused by the Court. Injunctions are an effective remedy to restrict the
sale of infringed goods etc.
While the suit is still pending. It thus prevents any further loss to the TM
holder. However, it does no good to improve the financial loss incurred by the
holder due to acts already carried out by the alleged infringer.
In view of the author, the effectiveness or rather ineffectiveness of the
remedies is also linked to the challenges faced by the Indian Judiciary in
enforcement of remedies. The absence of any positive definition of "goodwill and
reputation" in the TM Act stands as yet another roadblock to the effective
implementation of civil remedies in instances of TM infringement. The Act also
does not mention any "Damage for costs" for infringing trademarks.
The Delhi HC, in its judgment in the case of Hero Honda Motors Ltd. v. Shree
Ashuramji Scooters, laid down the differentiation between Compensatory and
punitive damages in TM infringement. The former aims at compensating the
plaintiff for the losses suffered by him while the latter are aimed at deterring
the infringers from indulging into such acts in the future. Damages to goodwill
and reputation were also stressed upon by the HC. This decision led to the
awarding of appropriate set of damages by the Indian Courts in various cases.
Another challenge faced by the Indian Judiciary is due to the advent of
e-commerce in this new era of technology.The most common issue is with
regards to the misuse of domain names by the online marketing websites.
Instances of selling of fake products and copying of renowned brands etc.
thereby infringing trademarks are increasing day by day. The present legislation
however seems archaic to solve these new set of problems.
The infringers cannot be reached many times due to various reasons including but
not limited to providing fake addresses and details thus making it difficult for
the Courts to send them notices. In cases where the infringer cannot be reached,
no punitive damages can be imposed on him/her even if the website operations are
restricted with immediate effect. This again adds as an additional burden to the
It can thus be seen that though civil remedies are the most chosen ones in cases
of TM infringement, they are not free from challenges and issues. It is
important the Indian Courts ensure effective implementation of the remedies to
fairly compensate the TM holders. Additionally, solving the above-mentioned
challenges faced by the Judiciary is the need of the hour. This ever-increasing
era of technological advancements certainly requires new set of effective
solutions to the novel problems that it has brought along.
Choosing The Road To Criminal Remedies – Analysing The Relevant Factors
The growth of Intellectual property in India has also brought with it serious
issues and challenges. While in cases of infringement, criminal remedies might
seem rather alluring and attractive; the process that they involve is equally
cumbersome and tedious
Furthermore, the lack of knowledge of IP laws by the Police, lack of
effective implementation, and the slow prosecution processes act as a cherry on
the top. It is true that the enforcement of IP laws in India is tilted towards
the civil remedies however, it is equally important for IP owners to consider
various factors while deciding on the most effective remedy.
The situation at hand and the availability of resources must be considered by
the IP owners while selecting the remedies. It has been seen that criminal
remedies turn out to be more useful and effective when the TM owner wishes to
conduct a market search thereby raiding all infringing set of goods.However,
it is important to note that the criminal route is not only cumbersome and
time-consuming but also requires huge financial resources to secure better
In view of the author, one must consider a few factors before walking down the
road of criminal remedies in cases of TM infringement.
Firstly, the Police may not always be aware of the intricacies of IP Law thus
posing serious threats to the process or raids involved in criminal remedies.
There might even be chances of information leak in cases of raids thereby making
the infringer aware of the raid and other details. This might create hardships
in the process as the infringers may even destroy relevant evidence or stop all
operations for the time-being.
Second, the criminal process puts a financial burden on the TM holder and
requires hefty sums of money to attain the desired goal. It is important that
the financial factor is seriously deliberated upon before choosing the criminal
Third, various delays and adjournments may lead to destruction/loss of relevant
pieces of evidence thus causing serious impediments the entire process. This
might turn into a waste of entire resources and may cause more harm than good to
the TM holder. The raids are sometimes also refused by the Police officers due
to the failure in recognising minute dissimilarities in the works.
Fourth, choosing the appropriate Court is yet another integral factor that needs
to be considered. Lower courts, like district courts, do not possess the
required knowledge at times which causes further delay and adjournments.
Additionally, while there is no denying that the process has smoothened over
years and has become more effective, the huge backlog of cases cannot be
ignored. This not only causes more delay but also acts as an impediment to
Lastly, it is not unknown that the damages are awarded proportionally to the
seriousness of the infringement. Thus, a TM holder with statutory rights must
proceed with civil actions rather than criminal ones. This will make it easier
for the holder to recover damages and compensation for the alleged
In addition to this, there also exists a lacuna in the criminal law while
dealing with TM cases. According to the same, the infringer is free to deal
with the goods till conviction is pronounced by the appropriate Court. There are
thus fair chances of abscondence of the infringer.
Furthermore, there may be instances of failure of the Police to find the
infringers and unleash the entire chain of supply of counterfeited products. The
authors firmly believe that an effective solution to this could be filing of
simultaneous criminal as well as civil complaints with the appropriate
While civil remedies will ensure restrain on supply of counterfeiting goods
through injunctions and other remedies) in the market while the suit is still
pending, the criminal remedies will help seize the infringed goods thus
protecting the rights of the TM holder. Both these actions can be invoked
simultaneously as they do not cause any prejudice to the parties by virtue of
them being co-extensive and different in nature as well as in content and
It is also essential to note that in practicality, criminal remedies might
actually turn out to be more effective in certain cases of TM infringement as
they strike at general deterrence and have a social stigma attached to them.
Furthermore, it not only shall deter the accused from indulging into such acts
but will also restrain the supply of infringed goods across the entire sales
Another important benefit of registering a criminal action is that the same can
even be initiated against unknown persons. This also differentiates the
criminal action with a civil one. It may happen that the holder in unaware of
the identity of alleged infringer, manufactures or distributors thereby causing
serious impediments to initiate proceedings. In such cases, recourse may be
taken to §93 and 94 of the CrPC that allows search and seizure against
This research assignment is a one-stop destination to understand the nuances of
trademark, its infringement and the remedies associated thereof. The authors
have tried to comprehensively cover the detailed aspects of rights conferred to
trademark owners in India with the help of recent judicial pronouncements.
Further, the research assignment discusses the activities which constitute
trademark infringement. The tests laid down by the legislature and its
interpretation and implementation done by the judiciary in bestowing and
protecting the rights of the trademark holder have been discussed at length.
There has been differing stance of the Indian judiciary with regards to the
concept of deceptive similarity. The same has been discussed with the help of an
amalgamation of old and recent judicial pronouncements which would aid the
reader to analyse the scenario back then and how it has emerged and shaped the
trademark jurisprudence of the country.
It is intelligible that everything comes with exceptions, so is the case with
the rights conferred to trademark holders. Consequently, the trademark regime
bestows a person with the defence of honest and concurrent use. The defence to
be claimed should satisfy some parameters which have been laid down by the
Conclusively, the assignment also brings forth the various remedies which a
rightful proprietor of a mark can claim. The remedies have been discussed in
light of the existing scenario and the lacunas consisting thereof have been
addressed. The authors have also proposed certain measures which would cater in
developing a robust and effective trademark regime which would provide a
balancing approach between the rights conferred to the proprietor and the public
- Mr.Gerd Kunze, 'Introduction to Trademark Law and Practice, Basic
Concepts, A WIPO training manual' (1993) WIPO Publication No 653 E accessed
22 March 2021
- The Trade Marks Act 1999, s 17 (The Act)
- The Act 1999, s 29
- The Act 1999, s 2(zb)
- World Trade Organisation, General Agreement on Trade-Related Aspects of
Intellectual Property (1869 UNTS 299)
- N.R Dongre and Ors.v Whirlpool Corporation and Anr. (1996) 5 SCC 714
- Cadila Healthcare Ltd. v Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73
- Reckitt and Coleman Products Ltd. v Borden Inc. & Ors.(1990) UKHL 12
- The Act 1999, s 29
- Henry Campbell and Bryan A, Black's Law Dictionary (9thedn, St. Paul,
- The Hearst Corporation v Dalal Street Communication Ltd. (1995) SCC
OnLine Cal 231
- Amritdhara Pharmacy v SatyaDeo Gupta (1963) 2 SCR 484
- The Act 1999, s 2(h)
- Bayerische Motoren Werke AG (BMW) v OM Balajee Automobile (2020) CS Comm
- Tulip De and IshaTiwari, "BMW v. DMW- Delhi HC grants interim protection
in favour of BMW" (Mondaq, 01 July 2020) <https://www.mondaq.com/india/trademark/958940/bmw-v-dmw-delhi-hc-grants-interim-protection-in-favour-of-bmw>
accessed 23 March 2021
- Arudra Engineers Pvt. Ltd.v Pathanjali Ayurved Ltd & Anr. (2020) SCC
OnLine Mad 1503
- Devika Sharma, "Madras HC – Patanjali restrained from using Trademark
Coronil till 30th July" (The SCC OnLine Blog, 21 July 2020) accessed 23
- MeeraEmmauel, "CORONIL CASE – Registration of Trademark does not confer
monopoly over part of it- Madras HC lifts injunction on PatanjaluAyurved"
(Bar and Bench, 05 Feb 2021) accessed 25 March 2021
- Cadila v Cadila (n 7)
- Sun Pharma Laboratories Ltd. v BDR Pharmaceuticals (2020) SCC OnLine Del
- ITC Ltd. v Britannia Industries Ltd. (2016) SCC OnLine Del 5004
- Consolidated Foods Corporation v Brandon and Company Pvt. Ltd., (1965)
AIR 1965 Bombay 35
- East End Hosiery Mills Pvt Ltd. v Agarwal Textile Mills (1970) SCC
OnLine Cal 57
- M/s Allied Blender and Distillers Pvt. Ltd. v GovindYadav and Anr.
(2019) CS(COMM) 819/2018
- Surya Roshni Ltd. v Electronic Sound Component Co. (1994) SCC OnLine Del
- M/s Bhatia Plastics v M/s Peacock Industries Ltd. (994) SCC OnLine Del
- ITC v Britannia (n 21)
- M/S Castrol Ltd.&Anr. v Iqbal Singh Chawla & Anr. (2018) SCC OnLine Del
- The Act 1999, s 12
- Kores (India) Ltd. v M/S Khoday Eshwarsa and Sons and Anr.(1984) SCC
OnLine Bom 65
- Goenka Institute of Education and Research v Anjali Kumar Goenka and Anr
(2009) 39 PTC 720 (Del)
- LexOrbis, "Trademark Disputes in Education – The Goenka Dispute" (Mondaq,
20 May 2009) accessed 27 March 2021
- The Act 1999, s 29
- Radhika Shukla, "Trademark Infringement and Remedies" (Legal Services
India, 26 June 2018) accessed 27 March 2021
- VK Ahuja, Law relating to Intellecutal Property Rights (3rd edn,
- SS Rana and Co., "Trademark Enforcement in India" (Lexology, 01 March
2018) accessed 27 March 2021
- The Act 1999, s 103 and s 104
- Kaviraj Pandit Durga Dutt Sharma v Navratna Pharmaceuticals
Company(1965) SCR 1 737
- The Act 1999, s 115(4)
- The Code of Criminal Procedure 1973, s 93
- Sanyo Electric Co. v State (2011) 45 PTC 55 (Del)
- The Act 1999, s 18(1)
- James Chadwick Bros Ltd. v The National Sewing Thread Co.Ltd. (1951) AIR
1951 Bom 147
- M/S Atlas Cycle Industries Ltd. v Hind Cycles Ltd. (1972) SCC OnLine Del
- The Act 1999, s 57
- B.V Elango Himachalapathy v Rank Xerox Ltd. and Ors.(2009) SCC OnLine
- Editor, 'Trademark Rectification' (IP and Corporate Law Research, 25
March 2019) accessed 27 March 2021
- The Customs Act 1962, s 11
- Editor, 'Trademark Infringement' (Selvam&Selvam, 27 April (2018)
accessed 28 March 2021
- Amit Ranjhan, "Civil and Criminal Prosecution in Trademark Violation" (Mondaq,
30 Oct 2018)<https://www.mondaq.com/india/trademark/749724/criminal-civil-prosecution-for-copyrighttrademark-violation>
accessed 28 March 2021
- Dr. R.K Bangia, The Law of Torts (24th edn, Paperback 2019)
- Hero Honda Motors Ltd. v Shree Ashuramji Scooters (2006) 32 PTC 117
- Rishu Shrivastava, "Internet, Electronic Commerce and Intellectual
Property" (Mondaq, 16 Jan 2016) accessed 28 March 2021
- Oishika Banerjee, "Remedies available for Trademark Infringement" (IPleaders
Blog, 29 May 2020) accessed 29 March 2021
- Vijay Pal Dalmia, "IPR & Criminal Remedies in India : Civil v. Criminal
Remedy in IPR"(Mondaq, 19 Nov 2015) < https://www.mondaq.com/india/trademark/444510/ipr-criminal-remedies-in-india-civil-vs-criminal-remedy-in-ipr-search-seizure-raids-by-police>
accessed 29 March 2021
- Essenese Obhan and Tarika Pillai, "Selecting the best remedy for
Trademark Enforcement in India" (Mondaq, 15 July 2020) accessed 28 March
- Amit Ranjan, "Criminal and Civil Prosecution for trademark violation (Khurana&Khurana
IP Attorneys, 23 Oct 2018) accessed 28 March 2021
- Power Control & Appliances v Sumeet Machines Pvt. Ltd.& Ors. (1993) AIR
1993 Mad 120
- Vijay Pal Dalmia, 'IP and IT Laws News Bulletin' (2007) 1(3) accessed 29
- Flower Tobacco Company v State and Anr. (1986) 6 PTC 352
- The Code of Criminal Procedure 1973, s 93 and s 94