IP Litigation

You can pursue both civil and criminal remedies. On the civil side, you can file a suit for trademark infringement (if your mark is registered) or passing off (whether registered or not) before the appropriate court. You can seek an interim injunction to stop the infringing activity immediately, permanent injunction, damages or an account of profits, and delivery up or destruction of infringing goods. On the criminal side, trademark infringement and the sale of goods with a false trade mark are cognisable offences under the Trade Marks Act, punishable with imprisonment and fines. The choice between civil and criminal remedies depends on the nature and scale of infringement. In many cases, both tracks are pursued simultaneously.

An interim injunction is a court order restraining the defendant from continuing the infringing activity while the suit is pending. To obtain one, you must demonstrate a prima facie case of infringement, that the balance of convenience favours you, and that you would suffer irreparable harm if the injunction is not granted. In urgent cases, courts can grant ex parte injunctions (without hearing the other side) within days or even hours of filing. The Delhi High Court and other High Courts routinely hear urgent IP applications on short notice. Speed of action matters because delay can weaken your claim for urgency.

A John Doe order (also called an Ashok Kumar order in Indian practice) is an injunction granted against unknown or unidentified defendants. It is used when infringement is widespread but the specific infringers cannot all be identified at the time of filing, for example, in cases of mass counterfeiting, online infringement across multiple platforms, or piracy of films and content on the date of release. The order binds anyone who falls within the description of the infringing activity, and is particularly effective when served on intermediaries, platforms, and ISPs who can act to block or remove infringing content.

Trademark infringement is a statutory remedy available to the owner of a registered trademark under the Trade Marks Act. Passing off is a common law remedy available to anyone who has goodwill in a mark, whether registered or not. For infringement, you must prove that the defendant is using a mark identical or deceptively similar to your registered mark in relation to similar goods or services. For passing off, you must prove goodwill in the mark, misrepresentation by the defendant, and actual or likely damage. Registration makes enforcement significantly easier because you do not need to prove goodwill or reputation independently. However, passing off offers a broader remedy in some situations, particularly for unregistered marks or where the infringement extends beyond the registered classes.

Indian courts can award damages on two bases: compensatory damages (the actual loss suffered by the plaintiff as a result of the infringement) or an account of profits (the profits earned by the defendant through the infringement). The plaintiff can elect one but not both. In practice, proving actual damages can be difficult, and courts have increasingly awarded reasonable royalty-based damages, i.e., what the plaintiff would have charged as a licence fee for the infringing use. Punitive or exemplary damages are also awarded in cases of wilful or flagrant infringement, particularly in counterfeiting and piracy matters. Courts also award costs, which can include the plaintiff’s legal expenses.

Yes. Under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, rights holders can record their trademarks, copyrights, patents, designs, and GIs with the Customs authorities. Once recorded, Customs can detain suspected infringing goods at the point of import. The rights holder is then notified and given an opportunity to inspect the goods and confirm whether they are infringing. If confirmed, the goods can be seized and destroyed. Customs recordal is a proactive enforcement tool and is particularly effective against counterfeit goods, grey market imports, and goods bearing confusingly similar marks.

Copyright infringement is both a civil wrong and a criminal offence under the Copyright Act. On the civil side, you can file a suit seeking interim and permanent injunction, damages or an account of profits, and delivery up of infringing copies. For online infringement, you can issue takedown notices to platforms and intermediaries, and seek court orders directing ISPs and platforms to block access to infringing content. On the criminal side, copyright infringement is a cognisable, non-bailable offence punishable with imprisonment of up to three years and fines of up to Rs. 2 lakh. Police can conduct search and seizure operations. The choice between civil and criminal remedies depends on the nature of the infringement, the urgency, and whether your primary objective is to stop the infringement, recover money, or deter future violations.

Patent enforcement in India is exclusively through civil suits filed in the appropriate High Court or district court. There is no criminal remedy for patent infringement. You can seek an interim injunction restraining the defendant from manufacturing, selling, or importing the infringing product, a permanent injunction, damages or an account of profits, and delivery up of infringing products. To succeed, you must demonstrate that your patent is valid, that the defendant’s product or process falls within the scope of your patent claims, and that you have standing to sue. The defendant can raise defences including non-infringement, invalidity of the patent, and the Bolar exception for regulatory approvals. Patent litigation in India is technically complex and often involves expert evidence. We advise on enforcement strategy, claim construction, and the interplay between patent litigation and compulsory licensing or revocation proceedings.

If you have a registered design, you can file a suit for design infringement seeking injunction, damages, and delivery up of infringing articles. If your design is not registered, you may still have remedies through copyright (if the design qualifies as an artistic work and has not been industrially applied beyond the threshold), passing off (if the design has acquired distinctiveness and reputation), or trade secret protection (if the design was accessed through a breach of confidence). The interplay between the Designs Act and the Copyright Act is important. Under Section 15(2) of the Copyright Act, if a design is registrable under the Designs Act but is not registered, and the article to which the design is applied has been reproduced more than 50 times by an industrial process, copyright protection ceases. Timely design registration is therefore important for products that will be manufactured at scale.

Yes. A trademark registration can be challenged through opposition proceedings (before grant) or rectification proceedings (after grant) before the Trade Marks Registry or the High Court. Grounds include prior use, similarity with existing marks, descriptiveness, bad faith, and non-use for a continuous period of five years. A patent can be challenged through pre-grant opposition, post-grant opposition before the Patent Office, or a revocation petition before the High Court. Grounds include lack of novelty, obviousness, non-patentable subject matter, and insufficient disclosure. We advise on both offensive and defensive strategies in opposition and revocation proceedings.

The jurisdiction for IP cases depends on the nature of the right and the relief sought. The High Courts have original jurisdiction for suits relating to patents, copyrights, trademarks, and designs where the value of the suit exceeds the prescribed threshold (which varies by High Court). The Commercial Courts Act applies to IP disputes of a specified value. District courts handle matters below the High Court threshold. The choice of jurisdiction also depends on where the infringement occurred, where the defendant resides or carries on business, and where the plaintiff carries on business and the cause of action arises. Strategic choice of jurisdiction can significantly affect the speed and outcome of enforcement.