Someone Is Copying Your Brand? Trademark Infringement and Passing Off Suits

What a trademark suit can get you

You're asking a civil court for an order that stops the other side using your mark, or anything deceptively close to it. That covers goods, packaging, the shop board, the website and the Instagram page. The order is called an injunction. In the same suit you can claim damages or the profits the copier made, ask for infringing labels and stock to be handed over and destroyed, and claim your legal costs.

You can sue on two grounds. Infringement is a right given by statute, and only the registered owner of a trademark has it. Passing off is older. It protects the goodwill you've built by actually trading under a name, registered or not. Most plaints plead both. If one trips on a technicality, the other can still carry the case.

For most brand owners, the injunction is worth more than the money. Frankly, it isn't close. A copy left in the market for two years quietly eats into your customers, your search ranking and your dealer network. An order that takes it out in the first month changes the whole balance of the dispute, and plenty of cases settle soon after the injunction is granted or refused.

The law, without the jargon

Infringement or passing off: which one is yours

If your mark is registered in the right class, you sue for infringement, and usually add passing off as well. Registration makes life easier. You needn't prove reputation just to get started. You produce the registration certificate and the defendant's mark, and argue that they're similar and likely to confuse.

Without a registration, your claim is passing off. Three things have to be proved. First, that buyers know the name and you have goodwill in it. Second, that the defendant's use passes its goods off as yours, or as connected with you. Third, that this causes you damage or is likely to. Goodwill comes from sales invoices, advertising, catalogues, trade listings and how long you've been at it. A business that adopted a name six months ago will have a much harder time than one that's traded under it for ten years.

Watch for two traps. The first is when the defendant has a registration of its own. You can't sue another registered owner for infringement on the strength of your registration alone, so that claim is weak, and you'd lean on passing off and a rectification application instead. The second is when the defendant used its mark before your first use, or before your registration. Section 34 protects that prior user. Your proof of first use then becomes the heart of the case.

How a court decides if two marks are deceptively similar

Judges look at the whole mark. They picture an ordinary buyer with an imperfect memory, glancing at a shelf or a phone screen. They don't lay the two labels side by side and count the differences. Think of someone who bought your product once and comes back a few weeks later. What sticks is the overall look and how the name sounds. Not every letter.

Sound counts for a lot in India. So much buying happens by asking for a product by name, at a counter or over the phone. Two marks spelt differently but sounding alike can be held similar, and so can a Hindi word and its English transliteration. The dominant part of the mark matters too. Tacking Pro, New or Plus onto your distinctive word won't usually rescue the copier.

The court also considers the goods, how they're sold and who buys them. Cheap everyday items picked up in a hurry get stronger protection than costly machinery bought after weeks of negotiation and two site visits. Price matters. Then there's trade dress, meaning the colours, shape and layout of the packaging. Even where the names differ, copying the overall get-up can support a passing off claim.

From spotting the copy to getting an injunction

Order matters here. Most of the harm done to trademark cases happens in the first fortnight, before any lawyer has looked at the file.

1. Lock down the evidence

   Buy the copy and keep the bill, the product and the box. Take dated screenshots of the listings, websites and social media pages, with the URL showing. You'll later need a certificate under Section 63 of the Bharatiya Sakshya Adhiniyam, 2023 for these electronic records. So note who took each screenshot, on what device, and when.

2. Search the register

   Look up your own marks at the Trade Marks Registry, with their classes and status, and look for anything the other side has applied for or registered. If something of yours has lapsed, renew it. And if their application has been published in the Trade Marks Journal, the four month window for opposing it may already be running.

3. Notice or no notice

   Against an honest small trader who'd never heard of your mark, a cease and desist notice often does the job. Against someone copying on purpose, it mostly buys them time to clear stock and switch names. With every new trademark file, Advocate B.K. Singh weighs one question first. Will a notice help, or will it just warn them?

4. Sort out Section 12A

   If you're seeking an urgent injunction, you can file without trying pre-institution mediation first. If all you want is damages for past use, or nothing is really urgent, you must mediate before you sue.

5. Put a value on it and pick the court

   Fix the market value of your trademark right for the purposes of the suit. That figure decides whether you go to the District Judge (Commercial Court) or to the Commercial Division of the Delhi High Court. Then settle where you can file territorially.

6. Draft and file

   For commercial suits, Order XI as amended and Order VI Rule 15A of the CPC require the plaint to disclose every document in your power and carry a statement of truth. It goes in with an application for interim injunction under Order XXXIX. Where it's needed, add an application for a local commissioner.

7. First hearing and interim orders

   The court may grant an ex parte injunction. It may issue notice for a short date instead, or appoint a local commissioner to go to the defendant's premises and list the infringing goods. Once the defendant appears, any ex parte order is looked at again.

8. Pleadings, trial and decree

   The defendant has 30 days from service of summons to file a written statement, and 120 days at the very most. Admission and denial of documents follow, then a case management hearing, evidence and final arguments. The case may end sooner, through a settlement or summary judgment under Order XIIIA.

A defendant who ignores the injunction can be hauled back to court. You apply for contempt, or under Order XXXIX Rule 2A of the CPC, which lets the court attach property and order civil detention for disobedience.

Urgent relief: ex parte injunctions, local commissioners and unknown sellers

An ex parte injunction is passed before the defendant has been heard. In trademark cases courts grant it when the copying is obvious, the goods are already on sale, and a notice would let the defendant hide the stock or change the name overnight. You have to put everything relevant before the court. That includes any earlier dispute, any settlement, any delay. Hide something and the injunction usually goes once the defendant points it out. You'll probably pay costs too.

A local commissioner is an advocate the court appoints under Order XXVI of the CPC. The commissioner visits the premises, usually without warning, lists the infringing goods, takes samples and photographs, and sometimes seals the stock right there. That's evidence the defendant can't wriggle out of later. The court fixes the commissioner's fee, and the plaintiff pays it upfront.

Sometimes the sellers are many and nameless. Think of fake goods on pavement stalls, or on a dozen online storefronts. Courts have passed orders against unnamed defendants, the so-called John Doe orders, and have told online marketplaces and domain registrars to take listings down or suspend domains. These orders need careful drafting. You also need a clear record of the copying, and a plan for serving and policing the order.

Move fast. A plaint showing you found the copy last month and came straight to court carries weight. One where the copy has sat on shelves for two years without a word from you carries much less. Delay won't always sink an injunction where the copying is dishonest. But the court will want to know why it's suddenly urgent.

Is Section 12A mediation needed before you file?

Section 12A of the Commercial Courts Act makes pre-institution mediation compulsory for commercial suits. The exception is a suit that contemplates urgent interim relief. The Supreme Court held the requirement mandatory for suits filed from 20 August 2022 in Patil Automation v. Rakheja Engineers (2022), and plaints that skipped it have been rejected. Yamini Manohar v. T.K.D. Keerthi (2023) was itself a trademark case. There the Court said urgency is judged from the plaint and the documents, and an injunction prayer can't be used as a device to dodge mediation.

Most trademark suits against a copy that's still on sale do ask for urgent interim relief. Courts accept that continuing infringement keeps causing harm. Your plaint still has to show it, though: when you found the copy, what you did next, and why three to five months in mediation would hurt you. If the copy has already stopped and you only want damages, mediate first. Our page on pre-institution mediation walks through how it works with the Legal Services Authority.

Where to file: court, value and territory

Nothing below a District Court can hear a trademark suit. IP disputes are commercial disputes, so the suit goes either to the court designated as Commercial Court for the district or to the Commercial Division of a High Court with original civil jurisdiction. Value decides which.

For IP suits, Section 12(1)(d) of the Commercial Courts Act lets the plaintiff estimate the market value of the right. In Delhi, a suit valued up to Rs 2 crore goes to the District Judge (Commercial Court) at Tis Hazari, Saket, Patiala House, Karkardooma, Rohini or Dwarka. Above Rs 2 crore it goes to the Commercial Division of the Delhi High Court, where the IP Division takes these matters. A proposal to raise the district court limit has been under consideration since late 2025, so confirm the current limit before you file. Be honest with the valuation, and be ready to explain it. A number picked just to land in a particular court can be challenged. Court fee also follows whatever you claim as damages.

In Uttar Pradesh and Haryana these suits go to the commercial court at District Judge level, for example at Ghaziabad, Gautam Buddh Nagar (Surajpur), Gurugram and Faridabad. Appeals lie to the Allahabad High Court and the Punjab and Haryana High Court respectively. The value rules are on our page on which commercial court will hear your case.

As for territory, Section 134(2) of the Trade Marks Act and Section 20 of the CPC give you options. You can sue where the defendant lives or works, or where the infringing goods are sold, and for infringement of a registered mark you can also sue where you carry on business, though the Supreme Court has read that last option narrowly. Got a branch where the copy is being sold? Sue there, not at a distant head office. With online sales, courts ask whether the website actually targets and sells to buyers in that city. Choose a forum you can defend. A territorial objection can get the plaint returned under Order VII Rule 10, months into the case.

Time and costs, stage by stage

Papers to collect before you file

Where trademark cases usually go wrong

• Thin proof of first use. Say you've used the mark since 2012 but your earliest invoices are from 2020. The court may well treat 2020 as your start date. Dig out the old invoices before you do anything else.
• A descriptive word. If the word just describes the product or how good it is, it's hard to claim it for yourself. The logo, label and get-up may still win for you. The word on its own probably won't.
• Sitting on your rights. Years of silence can look like acquiescence. Under Section 33, an owner who knowingly puts up with the use of a later registered mark for five continuous years loses the right to stop it.
• Not telling the court everything. Earlier proceedings, an old settlement, a letter you got years back. All of it has to be disclosed. When an ex parte order collapses, this is usually the reason.
• Tipping off a counterfeiter. Send a notice before the evidence is secured and the godown will be empty by the time the commissioner arrives. In trademark files that come to Advocate B.K. Singh after a raid found nothing, an early notice is often what went wrong.
• Going after the platform, not the seller. Marketplaces generally act on takedown requests and court orders. The real defendant is whoever's selling the goods. Name the seller, and add the platform only so the order gets complied with.

Damages, account of profits and costs

Section 135 makes you choose. Damages measure what you lost. An account of profits makes the defendant hand over what it earned from the copy. Exact loss is hard to prove, because sales fall for all sorts of reasons. That's why evidence of the defendant's own sales, gathered by the local commissioner or through disclosure under Order XI, is so useful. Delhi courts have awarded damages in clear cases of deliberate copying, but the amount depends heavily on what you can prove. Proof is everything here.

Costs carry more weight in commercial suits than in ordinary civil cases. Under Section 35 of the CPC, as substituted for commercial disputes, the loser generally pays the winner's costs, legal fees and expenses included, unless the court gives reasons for ordering otherwise. Facing that risk, a defendant often prefers to settle. It gives an undertaking to stop, its stock is destroyed, and it pays something towards costs.

If the defendant sold only a small quantity and stopped as soon as it learned of your mark, the court may give you an injunction and nominal damages, and little else. So decide early what you're after. A quick order and a clean market, or a long fight over money.

If you're the one accused of copying

Don't ignore a notice or a summons. Check the claim against the register. Is the other side's mark actually registered for your goods? When was it first used, and is your own use older? Section 34 protects a prior user. Section 30 allows honest descriptive use. And a mark that should never have been registered can be challenged through rectification before the High Court.

If you think a suit is coming, file a caveat under Section 148A of the CPC, so the court hears you before passing any ex parte order. Once you're served, the 120 day outer limit for the written statement applies, and you can file a counter-claim along with it. Our page on defending a commercial suit covers the wider strategy. Sometimes the sensible thing is a quick rebrand on agreed terms. That costs far less than losing after three years of trial.

It's different for startups, MSMEs and large brands

A startup usually has a young brand, not much sales history and not much money. Its registration is its strongest asset, so it should file early in every class it plans to use. When a dispute comes, a startup gets the most out of a focused injunction suit against one clear copier. A long damages claim rarely suits it. Too slow, too costly.

Take an MSME manufacturer with a regional brand, a spice business in Ghaziabad or a hardware maker in Faridabad. The copies usually turn up in the same local markets. A suit in the local commercial court and a quick visit by a local commissioner can work well here, and your own dealers often hold the evidence. Make sure your supply and distributor agreements say plainly that the brand is yours and can't be used once the agreement ends.

Large companies deal with volume. Lots of small counterfeiters, online sellers and lookalike domains. They need to manage the whole portfolio: suits against the big sources, platform takedowns for the small sellers, customs recordal against imports, and a watch on new applications in the Trade Marks Journal. Franchisors and distributors run into one problem in particular, the former partner who just won't take the signboard down. That's breach of contract as well as infringement. Both claims can go in one suit.

Other routes alongside the civil suit

The civil suit is your main tool for an injunction and damages. It isn't the only one. At the Trade Marks Registry you can oppose a copier's application within four months of its advertisement in the Trade Marks Journal, or seek rectification of a registration that shouldn't have been granted. Online marketplaces run their own IP complaint systems, and those can pull listings within days.

Falsifying a trademark, and selling goods under a false mark, are also offences under Sections 103 to 105 of the Trade Marks Act. The police can search and seize. Before they do, though, the officer has to get the Registrar's opinion on the facts, and that slows things down. A criminal complaint fits large-scale counterfeiting better than an honest dispute between two traders over similar names. Domain names using your brand can be challenged under the dispute policy of the registry concerned. And you can stop counterfeit imports by recording your rights with customs.

Related rights often come as a package. A copied label may also infringe the copyright in the artwork, which our copyright infringement page covers. And a former employee who leaves with your dealer list raises the questions on our trade secret protection page.

What to do this week

Buy the copy. Keep the bill. Screenshot every listing, with the date and URL. Find your registration certificates and your oldest invoices. Write down when you first heard about the copy, and from whom, because that date will matter when the court asks about urgency. Don't post about the dispute on social media. And don't threaten the other side over the phone or on WhatsApp.

Then work out, with advice, whether you need an urgent order or whether a notice and some negotiation will do. If you need an injunction, our page on urgent injunctions explains how courts weigh these applications, and our note on drafting a commercial suit explains why every document has to go in with the plaint. We discuss fees at the first meeting and agree them in writing, stage by stage.

If you'd like your registration, invoices and evidence of copying checked before you act, send them to Advocate B.K. Singh's team through the contact page.