How to Enforce Your Trade Mark Rights: Cease and Desist, Litigation and More

In today’s brand-driven economy, a trade mark is not merely a symbol; it is an asset. A well-protected trade mark safeguards a company’s reputation, goodwill and consumer trust. However, with increasing market clutter and competitive pressures, trade mark infringement has become a common challenge for businesses. Enforcing trade mark rights is crucial to ensure exclusivity and prevent dilution. This article provides a practical roadmap for enforcing trade mark rights in India, with a spotlight on contentious measures including litigation, injunctions and trade mark coexistence agreements.

Step 1: Cease and desist notice — The first line of defence

Before approaching the courts, the usual first step is sending a cease and desist notice to the alleged infringer. This notice:

(i) alerts the infringer about your registered rights;

(ii) demands that they immediately stop using the infringing mark;

(iii) often includes a request to destroy infringing materials and withdraw trade mark applications; and

(iv) may propose a negotiated settlement or licensing arrangement.

While not legally binding, this notice serves as evidence of the right holder’s attempt to resolve the matter amicably, which can be relevant in litigation for damages or costs.

Step 2: Litigation — Asserting trade mark rights in court

When a cease and desist notice is ignored or refused, trade mark owners often escalate the matter by initiating civil litigation. Under the Trade Marks Act, 1999¹, infringement and passing off suits can be filed in a District Court or a commercial court having jurisdiction.

(A) Infringement versus Passing off

(i) Infringement applies to registered trade marks and involves unauthorised use of a mark identical or deceptively similar to the registered mark (Section 29² of the Trade Marks Act, 1999).

(ii) Passing off protects unregistered trade marks. It is a common law tort based on the misrepresentation that damages the goodwill of a business.

(B) Jurisdiction and forum

Trade mark infringement suits can be filed where:

(i) the plaintiff resides or carries on business; or

(ii) the cause of action arises.

After the Commercial Courts Act, 2015³, all suits of a specified value involving commercial disputes [including intellectual property (IP) rights] must be filed in commercial courts.

(C) Remedies available

The Court may grant:

(i) permanent injunction — restraining further use of the infringing mark;

(ii) interim/temporary injunction — pending final disposal;

(iii) damages or account of profits;

(iv) delivery up of infringing goods; and

(v) costs.

Supreme Court ruling strengthening enforcement

The Indian Supreme Court has reinforced the rights of trade mark holders in various landmark decisions:

1. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.⁴: The Court laid down parameters for determining deceptive similarity even when the goods are not identical. It emphasised the need for a stricter approach in the case of medicinal products due to public health implications.

2. Milmet Oftho Industries v. Allergan Inc.⁵: Held that prior use internationally may be sufficient to restrain Indian companies, even if the foreign company has no physical presence in India.

3. Neon Laboratories Ltd. v. Medical Technologies Ltd.⁶: Reiterated that mere delay in bringing an action cannot be a defence when confusion or deception is likely.

These cases establish that Indian courts favour strong protection for trade mark holders, especially when consumer confusion is likely.

Trade mark coexistence agreements — Peaceful co-protection

When two similar marks have coexisted without conflict, parties may opt for a trade mark coexistence agreement. These contracts allow both parties to use their respective marks under specified conditions, avoiding litigation.

Essentials of a valid coexistence agreement

(i) clear demarcation of geographical areas or classes of goods/services;

(ii) quality control provisions to avoid dilution;

(iii) dispute resolution clauses; and

(iv) registration with the Trade Marks Registry (optional, but advisable).

However, courts have held that coexistence agreements cannot override the public interest, especially if confusion is still likely despite the agreement. The Delhi High Court in H&M Hennes & Mauritz AB v. HM Megabrands (P) Ltd.⁷ stated that such agreements must be scrutinised in the light of consumer confusion and deceptive similarity.

Criminal action — A parallel deterrent

Section 103⁸ of the Trade Marks Act, 1999 also prescribes criminal liability for falsifying or falsely applying trade marks. Punishment includes:

(i) imprisonment (minimum 6 months, extendable to 3 years);

(ii) fine (Rs 50,000 to 2,00,000).

While not always the preferred route, criminal complaints can create strong deterrence in counterfeiting cases.

Practical tips for trade mark enforcement

(i) Maintain detailed records of use, promotion and sales to establish goodwill.

(ii) Act swiftly — delays may weaken claims for interim injunctions.

(iii) Conduct trade mark watch to detect new filings/infringements.

(iv) Explore coexistence or licensing, especially in cross-border disputes.

Conclusion

Trade mark enforcement in India is no longer just about ownership — it is about action. In a landscape where brand identity is currency, legal enforcement is a vital business function. While cease and desist letters offer a cost-effective starting point, litigation is often the mainstay of serious enforcement. With the backing of Indian judiciary and statutory provisions, brand owners have a formidable arsenal. But legal battles should always be balanced with commercial pragmatism — sometimes, peaceful coexistence wins the day.