Trademark and Copyright Laws: Infringement, Passing Off, Licensing

What protection does Indian law give a brand name or a creative work?

A trademark protects the sign that tells customers whose goods or services they are buying: a name, logo, tagline, label, shape, colour combination or even a sound. Copyright protects original expression: writing, artwork, photographs, music, films, software code and similar work. A logo can carry both rights at once, because it is a trademark in the market and an artistic work on paper.

Trademark rights come from use and from registration. Registration under the Trade Marks Act 1999 gives you the exclusive right to use the mark for the goods or services registered (section 28) and lets you sue for infringement. Without registration you still have rights built on use and goodwill, but you protect them through a passing off action, where you must prove more.

Copyright needs no registration. It exists the moment an original work is created and fixed in some form. Registration with the Copyright Office is optional, but the certificate is accepted as prima facie evidence of the particulars entered in it, which helps when ownership is disputed.

Trademark and copyright at a glance

Someone is copying my brand name. What can I do?

Collect evidence first, then send a notice or go straight to court, depending on how serious the copying is. Take dated screenshots of the website, listing or social media page, buy a sample with a proper bill, photograph the shop board, and note the date you first came to know of it. Then check the Trade Marks Registry records to see whether the other side has applied for or registered anything.

For a small local copy, a cease and desist notice often ends the matter: many people rebrand once they see a registration certificate and a clear demand. For deliberate counterfeiting, a notice can do harm, because it warns the other side to clear stock and change names before a court can act. In those cases we usually file the suit and ask for an ex parte interim injunction, often with a local commissioner to visit the premises.

Advocate B.K. Singh looks first at three dates in the papers: when you started using the mark, when you applied for it, and when the other side started. Most disputes are decided by that sequence, so it is worth putting your old invoices, advertisements and domain records in order before the first meeting.

The provisions that matter most

Infringement or passing off: which one applies to me?

If your mark is registered for the goods or services in question, you sue for infringement, and in practice you add passing off as well. Infringement is easier to prove: you show your registration, the other mark, and that the two are identical or deceptively similar for similar goods. You do not have to prove that you lost a single sale.

If your mark is not registered, or the copying falls outside your registered classes, you rely on passing off. Here you must prove three things: goodwill in your mark among customers, a misrepresentation by the other side that leads people to think their goods are yours or connected to you, and damage or the likelihood of damage. Goodwill is proved through sales figures, advertising spend, invoices across years, press coverage and customer recognition.

Courts compare marks as a whole, as an average customer with imperfect recollection would see them, not side by side under a magnifying glass. Phonetic similarity counts heavily in India, where many products are ordered by name over the counter or the phone. The nature of the goods and the buyers also matters: confusion is judged more strictly for medicines than for industrial machinery bought by trained engineers.

Can I stop a copycat if my trademark is not registered?

Yes, if you used the mark first and have built real goodwill, a passing off suit can stop a later user even if that user has registered the mark. Indian law favours the prior user over the first to register (section 34), and a registration obtained over someone else's earlier mark can be cancelled. The difficulty is proof, not principle.

The cases that succeed have paperwork going back years: GST invoices with the brand name, bills from the printer who made the labels, advertisements, domain registration records, trade fair entries, and photographs of the shop board with a date. A sweet shop that has traded under one name in Ghaziabad for fifteen years usually has more evidence than it realises, scattered across ledgers and old pamphlets.

If you are using a brand without registration today, file an application now. It costs far less than a passing off suit, and it moves you from proving goodwill to proving a certificate.

How a trademark or copyright suit runs in Delhi NCR

Most IP suits are commercial suits under the Commercial Courts Act 2015, which brings strict timelines. A typical sequence looks like this.

1. Evidence and strategy

   We collect proof of your rights and of the copying, run searches, and decide whether to send a notice or file without one. Test purchases with bills and dated captures of websites are prepared at this stage.

2. Notice or direct filing

   A cease and desist notice gives the other side a short time to stop and confirm in writing. Where secrecy matters, we skip the notice and file the suit with an application for urgent interim relief.

3. Pre-institution mediation question

   Section 12A of the Commercial Courts Act requires mediation before filing unless the suit seeks urgent interim relief. Courts check whether the urgency is genuine, so the plaint must show why the matter cannot wait.

4. Filing and first hearing

   The suit is filed in the district commercial court or, for a value above ₹2 crore, in the Delhi High Court on its original side. At the first hearing the court may grant an ex parte ad interim injunction and appoint a local commissioner to inspect and inventory infringing goods.

5. Written statement and documents

   The defendant must file a written statement within 120 days at the outside, after which the right is lost. Both sides then admit or deny each other's documents, which narrows what has to be proved at trial.

6. Interim injunction hearing

   The court decides whether the injunction continues until trial, looking at prima facie case, balance of convenience and irreparable harm. In many IP cases this order decides the dispute in practice, because few businesses keep fighting under an injunction.

7. Settlement, summary judgment or trial

   Many suits end in a recorded settlement with an undertaking to change the mark, surrender of stock and costs. Where the defence has no real prospect, the plaintiff can seek summary judgment under Order XIIIA; otherwise evidence is led and the suit goes to final hearing.

The procedure in commercial courts, including the 120-day rule and case management hearings, is explained in more detail on our page on the commercial courts in Delhi.

Which court: district commercial court or the Delhi High Court?

In Delhi, a commercial IP suit valued above ₹2 crore goes to the Delhi High Court, where an IP Division hears these matters; below that, it goes to the district commercial courts at Saket, Tis Hazari, Patiala House, Karkardooma, Rohini or Dwarka, depending on the area. In Noida and Ghaziabad, commercial suits are heard by the commercial courts attached to the Gautam Buddh Nagar court at Surajpur and the Ghaziabad district court.

The plaintiff values the suit, which decides both the forum and the court fee. Overvaluing to reach the High Court can draw objections, and undervaluing limits the damages you can claim, so the valuation is a decision to take with care rather than a box to fill.

Jurisdiction is wider in IP cases than in ordinary suits. Section 134 of the Trade Marks Act and section 62 of the Copyright Act let you sue where you carry on business, not only where the defendant is. Online sales into Delhi can also give Delhi courts jurisdiction, though the courts look for real targeting of customers here, not merely a website that can be seen from anywhere.

What is trademark opposition and when should I file one?

An opposition is your chance to stop a confusing mark before it is registered. Every accepted application is advertised in the Trade Marks Journal, and anyone may oppose it within four months of the advertisement by filing a notice of opposition with the Registry. The four months cannot be extended, so a watch on the Journal is worth keeping if your brand matters to your business.

Once you oppose, the applicant has two months to file a counter-statement or the application is treated as abandoned. Both sides then file evidence by affidavit, and the matter is heard by a hearing officer of the Registry. Grounds usually include similarity with your earlier mark (section 11), lack of distinctiveness or descriptiveness (section 9), and bad faith.

If you missed the window and the mark is now registered, you can apply to remove it from the register. Rectification and cancellation (sections 47 and 57) are heard by the Registrar or the High Court; since the Intellectual Property Appellate Board was abolished in 2021, the Delhi High Court hears these petitions for Delhi. Non-use for a continuous period of five years and three months is one common ground for removal.

How do I get copied content or fake listings taken down online?

Start with the platform's own intellectual property complaint process, which is usually the fastest route. Marketplaces, social media sites and video platforms all run IP reporting forms that ask for proof of your registration or ownership and links to the offending content. A registration certificate makes these complaints far more effective, which is one more reason to register.

Under the IT Act 2000, platforms keep their safe harbour (section 79) only if they act on proper notice, and the IT Rules 2021 require them to have grievance officers. For copyright, the Copyright Rules 2013 require an intermediary to disable access for 21 days on a proper notice from the owner, within which the owner must obtain a court order to keep the content down. Where a platform does not act, a court order directed to it usually does the job.

For domain names that copy a brand, a .in domain can be challenged under the .IN Domain Name Dispute Resolution Policy, and a .com domain under the UDRP, without going to court. The Delhi High Court has also granted injunctions against websites dealing in pirated content and against unnamed persons selling counterfeits. Where impersonation or online fraud is involved, our pages on cyber laws and the cyber crime practice cover the police side.

Who owns the copyright in work I paid for?

Paying for a logo, website or photograph does not by itself make you the copyright owner. Under section 17 of the Copyright Act, the author is the first owner, with exceptions: work made by an employee in the course of employment under a contract of service belongs to the employer, unless agreed otherwise. A freelancer or design agency working on contract keeps the copyright unless it is assigned to you in writing.

An assignment must be in writing and signed (section 18). If the document does not state the period, it is deemed to be five years, and if it does not state the territory, it is deemed to be India (section 19). Many businesses discover this only when they fall out with the agency that designed their logo, which then claims the artwork and objects to its use or registration.

Authors also keep moral rights under section 57: the right to be identified as author and to object to distortion that harms their reputation. A properly drafted agreement with a designer, developer or content creator deals with ownership, moral rights and the source files at the outset.

Is it fair use? What copyright does not stop

Indian law uses the term fair dealing, and section 52 lists the specific purposes it covers: private or personal use including research, criticism or review, and reporting current events. Quoting a reasonable extract of a book in a review is fair dealing; reproducing whole chapters on a website is not. There is no fixed word count or percentage that makes copying safe.

Copyright protects expression, not ideas, facts or methods. Someone may write their own cookbook with the same dishes as yours, but may not copy your text and photographs. Titles and short slogans are usually not protected by copyright, though a title used as a brand can be protected as a trademark.

If you have received a copyright notice, these limits matter. A notice that claims ownership of an idea, a common phrase or a generic layout is weaker than it looks, and a measured reply is often enough.

How should I license my trademark or content?

Licensing lets someone else use your mark or work while you keep ownership, and the written terms decide how much control you keep. A trademark licence should define the goods, territory, duration, royalty and, above all, quality standards with a right to inspect. A licence with no quality control can weaken the mark, because the public stops associating it with a single source.

A copyright licence must be in writing under section 30, and should state which rights are licensed (print, online, film, translation), for how long, for which territory, and whether it is exclusive. Assignments and licences of a registered trademark can be recorded with the Registry, which helps in later disputes and with platforms.

Franchise arrangements combine a trademark licence with know-how, supplies and training. The drafting points for franchise, distribution and licence agreements are on our page on drafting commercial agreements, and corporate structuring of brand-holding entities is covered under corporate law.

Remedies and what each one needs

Should I file a police complaint for counterfeit goods?

A criminal complaint makes sense for large-scale counterfeiting, such as a godown of fake branded goods, but it is a poor tool for an ordinary name dispute between two businesses. Offences under sections 103 and 104 of the Trade Marks Act and section 63 of the Copyright Act are cognizable, and the police can raid and seize stock. In trademark cases the officer must first obtain the Registrar's opinion under section 115(4), which takes time.

Police action does not give you an injunction or damages, and a weak criminal complaint can be quashed and expose you to a claim for malicious prosecution. Where the other side honestly believes it has a right to the name, the dispute belongs in a civil court.

In practice, brand owners dealing with counterfeit goods often run both routes: a civil suit for injunction and a local commissioner, and a criminal complaint where the scale justifies it. The two are planned together so that one does not undercut the other.

What to bring to the first meeting

Bring what you have; we will tell you what is missing. Copies are fine for the first meeting.

When not to sue over a trademark

Not every resemblance is worth a suit. If your mark is descriptive (a word that simply describes the product, like a quality or place), the court may find you cannot claim exclusivity over it at all. If the other business is in a different trade, a different city and a different price segment, the chance of confusion may be too thin to justify the cost.

Check your own position before you attack. If the other side used the name before you did, a suit can end with your own registration being questioned. If you knew about the copy for two years and did nothing, the court may refuse interim relief even if you win at trial years later.

Sometimes a coexistence agreement serves both sides better: each keeps its name, with clear limits on colours, territory or goods. And where you are the new entrant facing an older mark, rebranding early is cheaper than defending a suit and rebranding later anyway.

I received a trademark infringement notice. What should I do?

Do not ignore it, and do not reply in anger the same day. Read the notice for the registration number, the classes claimed and the deadline, then check those details on the Registry's records. Notices sometimes claim rights in classes or goods the sender has never registered.

Gather proof of when and why you adopted your name, and whether you searched the register before doing so. If the sender's case is strong, a negotiated change of name with a reasonable phase-out period is usually far better than an injunction at the first hearing. If the case is weak, a firm reply setting out your prior use or the differences between the marks often ends the correspondence.

Consider filing a caveat under section 148A of the Code of Civil Procedure in the court where a suit is likely, so that you are heard before any ex parte order. A caveat lasts 90 days and needs to be renewed if nothing is filed.

Costs, time and how we work on IP matters

Fees are discussed at the first meeting and agreed in writing, stage by stage: notice, suit, interim injunction, trial or settlement. Court fees, local commissioner fees, search charges and official filing fees are separate. In Delhi the court fee in an IP suit depends on how the reliefs are valued.

Timelines vary a great deal. An ad interim injunction can come at the first hearing; a contested interim application can take months; a full trial takes years, which is why most IP suits are settled or decided in practice at the interim stage. We will not promise a date that depends on the court's board.

Advocate Sadhna Singh usually takes the first call, reviews the papers and organises the evidence of use, which is where most of the work lies. Advocate B.K. Singh handles the strategy and the court hearings, and his computer science background is useful in software copyright and online infringement cases. You can read more on his profile, see our other areas of practice, or send the papers through our online enquiry form.