The grounds of infringement — Section 29

Passing off — Section 27(2)

Nothing in the Act affects the right to sue for passing off. This is your alternative and cumulative cause of action, essential where the goods fall outside your registered specification, where your registration is vulnerable, or where the mark is unregistered. It requires reputation, misrepresentation and damage.

Where you can sue — Section 134

Section 134(2) permits a suit for infringement to be filed in a District Court within whose jurisdiction the plaintiff actually and voluntarily resides, carries on business or personally works for gain. This is a significant departure from the ordinary rule under Section 20 CPC, and it is why a well-advised proprietor states its own place of business clearly in the notice.

What you can obtain — Section 135

Relief includes injunction (temporary, permanent, ex parte), and at the plaintiff’s option either damages or an account of profits, together with or without an order for delivery up of infringing labels and marks for destruction or erasure. Courts also appoint Local Commissioners for search and seizure, and grant John Doe (Ashok Kumar) orders against unidentified infringers and dynamic injunctions against rogue websites.

Criminal exposure — Sections 103, 104 and 105

Falsifying a trademark or falsely applying a mark to goods or services, and selling goods bearing a false mark, are offences punishable with imprisonment of six months to three years and fine of ₹50,000 to ₹2,00,000. Section 115 governs cognisance and search and seizure. Reference to criminal exposure in a notice must be accurate and measured — see the caution on Section 142 below.

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The Defences You Must Anticipate Before You Write

A notice drafted without testing the recipient’s defences invites a confident reply and weakens your position.

Section 30 — limits on the effect of registration. Use in accordance with honest practices in industrial or commercial matters; use to indicate kind, quality, quantity, intended purpose, value or geographical origin; use for identifying genuine goods or services, such as spare parts and servicing; and exhaustion of rights under Sections 30(3) and 30(4), where goods have lawfully been put on the market.

Section 34 — saving for vested rights. A registered proprietor cannot interfere with the use of an identical or similar mark by a person who has used it continuously from a date prior to the proprietor’s use or registration, whichever is earlier. If the recipient has genuine prior use, your notice may be answered rather than obeyed.

Section 35 — bona fide use of own name. A person may use their own name or the name of their place of business, or a bona fide description of the character or quality of their goods.

Counter-attack. A serious recipient responds not with a letter but with a rectification petition under Sections 47 or 57, seeking removal of your mark for non-use or on the ground that the entry was wrongly made. Assess your own vulnerability before you provoke it.

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The Warning Nobody Reads Until It Is Too Late: Section 142

Section 142 allows a person aggrieved by threats of infringement proceedings, made by circulars, advertisements or otherwise, to sue for a declaration that the threats are unjustifiable, an injunction against their continuance, and damages.

The section does not apply where the person making the threat commences and prosecutes an action for infringement with due diligence. A mere notification that a trademark is registered is not, by itself, a threat.

The practical lessons:

1. Do not send a notice you are not prepared to back with a suit. Empty threats are actionable.
2. Do not threaten parties you have no case against — particularly retailers, marketplaces, printers and stockists who may fall within Section 30.
3. Do not circulate the notice publicly or write to the recipient’s customers and distributors before you have sued. Broadcast threats are the classic Section 142 fact pattern.
4. Follow through. A notice sent and then abandoned for a year both invites a Section 142 claim and hands the infringer a delay-and-acquiescence argument when you finally do apply for an injunction.

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Before You Draft: The Pre-Notice Audit

On your own rights

• Registration number, class, current status and renewal date — confirm the mark is live
• The exact specification of goods — do the infringing goods fall within it, or only near it?
• Is the proprietor on the register the same entity that will sue? An unrecorded assignment under Section 45(2) is a title problem, not a paperwork problem
• Is copyright in the logo artwork owned or assigned in writing?
• Is the mark genuinely in use across the registered goods, or exposed under Section 47?

On the recipient

• Correct legal name and constitution from MCA or GST records — a notice to a brand name rather than the legal entity is defective
• Registered office, all branches, and the directors or partners where personal liability is asserted
• Have they filed a trademark application? On what date, in what class, claiming use from when?
• Do they have a prior use claim capable of engaging Section 34?
• Are they a deliberate counterfeiter, a competitor who adopted knowingly, or a small trader who adopted innocently? The answer changes the entire tone of the notice.

On evidence — collect it before you write, not after

• Purchase the infringing product through an independent person and preserve the invoice, packaging, labels and photographs
• Notarised screenshots of the website, listings, social media pages and advertisements, with dates and URLs visible
• Archived versions of the website, showing the period of use
• MCA, GST, FSSAI, Udyam and import records evidencing the scale of trade
• Photographs of signage, hoardings, vehicles and outlets
• A side-by-side comparison chart of your mark and theirs — this single annexure does more persuasive work than three pages of argument

Evidence gathered after a notice is worth far less. The first thing a sophisticated recipient does is take down the listings.

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Anatomy of a Properly Drafted Notice

1. Heading and dispatch

Advocate’s or firm’s letterhead, date, and the mode of service stated on the face of the notice — Registered Post with Acknowledgement Due, Speed Post, courier and email, all of them. Proof of dispatch and delivery becomes an exhibit later.

2. Addressee

Full legal name, constitution and registered office of the entity, with additional addresses of branches and outlets. Where personal liability is asserted, directors or partners are addressed by name.

3. Statement of authority

“Under instructions from and on behalf of my client…” — establishing that the advocate acts on instructions.

4. The client and its goodwill

Business, year of commencement, product or service range, geographical presence, turnover, advertising expenditure, awards and any well-known status. This paragraph is doing the work of proving reputation, which you will need for passing off and for Section 29(4).

5. Statement of rights

Registration numbers, classes, application dates, current status, renewal position, user claimed since, and any pending applications. Copyright in the logo, and domain registrations, stated separately.

6. The infringing acts

Precisely what the recipient is doing, since when, in what form, in what territory, on which platforms — cross-referenced to numbered annexures. Precision here is what separates a notice that is complied with from one that is ignored.

7. The legal case

The specific sub-sections of Section 29 relied on, passing off pleaded in the alternative, copyright infringement under the Copyright Act, 1957 where the logo is copied, Section 29(5) where the mark is used as a trade name, and the criminal provisions where counterfeiting is established.

8. The harm

Likelihood of confusion, actual instances of confusion if any, dilution of distinctiveness, damage to reputation, deception of the public, and loss of sales.

9. The demands — specific and enumerated

A notice that says “cease and desist forthwith” and nothing more is unenforceable and easy to ignore. Enumerate:

• Immediate and permanent cessation of all use of the impugned mark
• Removal from products, packaging, labels, signage, hoardings, stationery, invoices, vehicles, uniforms and promotional material
• Removal from the website, mobile application, social media handles and all marketplace listings, with specific URLs listed
• Withdrawal of any pending trademark application, and of any opposition filed against your marks
• Change of the company or LLP name where it incorporates the mark, with reference to Section 16 of the Companies Act, 2013
• Transfer or cancellation of the offending domain name
• Delivery up of all infringing goods, labels and packaging material for destruction
• Full disclosure of accounts — quantity manufactured, sold and in stock — and identification of suppliers, manufacturers and distributors
• Compensation or damages, where a figure is being claimed
• Execution of a written undertaking in the format enclosed, which is the single most useful annexure in the entire notice

10. Time for compliance

Seven, fourteen or fifteen days. Realistic and defensible. A forty-eight hour deadline for a national distributor tells a court you were posturing.

11. Consequences of non-compliance

Civil proceedings for permanent injunction, damages or account of profits and delivery up under Section 135; criminal complaint where warranted; and costs — all at the recipient’s risk as to costs and consequences.

12. Reservation of rights

Without prejudice to any other rights and remedies available; the notice is not exhaustive of the grounds available; nothing in it constitutes a waiver, acquiescence or licence.

13. Annexures

Registration certificates, renewal proof, comparison chart, purchase invoice and product photographs, notarised web captures, MCA and GST extracts, and the draft undertaking.

14. Signature block

Advocate’s signature, enrolment number, address for service and contact details, with a note that a copy has been retained in office.

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Calibrating the Tone: Three Different Letters

The hard cease and desist — for counterfeiters and deliberate copyists. Full statutory exposure including the criminal provisions, a short compliance window, a demand for accounts and delivery up, and an unambiguous statement that proceedings will follow. Often paired with a decision not to send at all where an ex parte injunction and a Local Commissioner would be more effective.

The firm commercial notice — for competitors who adopted knowingly but trade openly. Assertive on rights, precise on demands, and open to a structured resolution: a phase-out period for existing stock, a change of get-up, a coexistence agreement with agreed limits, or an assignment of their pending application to you. Most business disputes resolve here.

The brand protection letter — for small or innocent adopters, fan pages and unaware traders. Courteous, explanatory, with a reasonable transition period. Two reasons: the reputational cost of appearing to bully a small trader is real, and the goal is cessation, not humiliation. This letter still creates the record you need if it is ignored.

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When You Should Not Send a Notice at All

• Counterfeiting operations, where surprise is essential and the correct step is a suit with an application for an ex parte ad interim injunction and appointment of a Local Commissioner for search and seizure
• Where evidence will be destroyed the moment the recipient is alerted — listings deleted, stock moved, records altered
• Where your own registration is vulnerable to rectification for non-use or on absolute grounds, and the notice would trigger the attack
• Where the recipient has a genuine prior use claim under Section 34 and the honest answer is a coexistence negotiation, not a threat
• Where urgent interim relief is intended — under Section 12A of the Commercial Courts Act, 2015, pre-institution mediation is mandatory for commercial suits except where the suit contemplates urgent interim relief. The enforcement strategy and the notice strategy must be decided together, not sequentially

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After the Notice: The Follow-Through

Compliance received. Obtain the signed undertaking, verify actual removal across every channel listed, and diarise a follow-up inspection at thirty and ninety days. Retain the undertaking — breach of it strengthens any later application enormously.

Reply denying infringement. Evaluate it seriously rather than reflexively. If the defence under Section 30, 34 or 35 has substance, a negotiated coexistence is a better outcome than a suit you may lose. If it does not, a short second notice or immediate institution of proceedings.

Negotiation. Common landing points are a phase-out period for existing inventory, a change in get-up, colour scheme or font, a defined territorial or product-line separation recorded in a coexistence agreement, a licence with quality control, or acquisition of the recipient’s mark by assignment.

No response. Move. Delay is the most common reason interim injunctions are refused, and an infringer who is ignored for a year will argue acquiescence. Consider filing a caveat under Section 148A CPC in the courts where the recipient may seek anticipatory relief.

Counter-attack. Be prepared for a rectification petition under Sections 47 or 57, a Section 142 groundless threats claim, or a caveat filed by the recipient. All three are foreseeable and all three are manageable if the pre-notice audit was done properly.

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Drafting Mistakes That Cost Cases

1. Overstating the right — asserting exclusivity in classes or goods that the registration does not cover
2. Sending a notice on a mark that has lapsed, or that stands in a different name on the register
3. Loose threats of criminal prosecution where the facts do not support falsification, inviting a Section 142 response
4. Vague demands with no undertaking format enclosed, so there is nothing for the recipient to sign
5. An unrealistic deadline that signals posturing rather than intent
6. No annexures and no evidence, so the recipient safely calls the bluff
7. Addressing the notice to a trade name rather than the legal entity, or to a branch instead of the registered office
8. Writing to the recipient’s customers, distributors and marketplaces before suing — the textbook groundless threats scenario
9. Sending a notice when the case called for an ex parte injunction, destroying the element of surprise
10. Failing to preserve evidence before dispatch
11. Ignoring the Section 12A mediation position and the effect it has on timing
12. Sending and forgetting — no docket, no follow-up, no escalation, which teaches the market that your brand is not enforced

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How Delhi Legal Company Handles Infringement Notices

• Enforceability assessment first — the strength of your registration, the reach of your specification, your exposure to rectification, and the recipient’s likely defences, before a single line is drafted
• Evidence capture — trap purchases, notarised web captures, comparison charts and record extracts, secured before the recipient is alerted
• Strategy call — notice, negotiation, or straight to suit with an application for ex parte relief and a Local Commissioner
• Drafting — a notice tied to specific sub-sections, with enumerated demands and a ready-to-sign undertaking annexed
• Dispatch and proof — registered post AD, speed post, courier and email, with dispatch records preserved for evidence
• Follow-through — reply analysis, negotiation, coexistence and settlement drafting, or institution of proceedings before the Commercial Court or the Delhi High Court
• Defence — where you are the recipient of a notice, an honest assessment of the claim and a reply that protects your position without conceding it

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Frequently Asked Questions (FAQs)

1. What is a trademark infringement notice?

A. It is a formal legal communication, usually issued through an advocate, informing a party that their use of a mark infringes the sender’s trademark rights, setting out the legal basis for that claim, and demanding that the use stop within a stated period. It is commonly called a cease and desist notice.

2. Is sending a legal notice compulsory before filing an infringement suit?

A. No. There is no statutory requirement under the Trade Marks Act, 1999 to issue a notice before suing for infringement. In cases of counterfeiting or where evidence may be destroyed, a suit with an application for an ex parte injunction is often the better first step precisely because it preserves surprise.

3. What is the difference between infringement and passing off?

A. Infringement is a statutory remedy available to the proprietor of a registered trademark under Section 29. Passing off is a common-law remedy preserved by Section 27(2), available even for unregistered marks, but it requires the claimant to prove reputation, misrepresentation and damage. Most notices assert both.

4. Which sections of the Trade Marks Act are cited in an infringement notice?

A. Principally Section 28 for the exclusive right, Section 29 with its relevant sub-sections for the specific acts of infringement, Section 31 for prima facie validity, Section 27(2) for passing off, Section 134 for jurisdiction, Section 135 for reliefs, and Sections 103 to 105 where criminal falsification is alleged.

5. Can I send a notice if my trademark is only applied for and not yet registered?

A. You cannot claim statutory infringement under Section 29 until the mark is registered. However, you can send a notice based on passing off, prior use and reputation, and you may also oppose their application. The notice must be drafted honestly — asserting registration you do not hold is a serious error.

6. What is Section 142 and why does it matter?

A. Section 142 allows a person aggrieved by groundless threats of infringement proceedings to sue for a declaration that the threats are unjustifiable, an injunction, and damages. It does not apply where the party making the threat commences and prosecutes an infringement action with due diligence. It is the reason a notice should never be sent unless you are prepared to follow it with a suit.

7. Can I write to the infringer’s customers, distributors or the marketplace?

A. Be very careful. Circulating threats to third parties before instituting proceedings is the classic fact pattern for a Section 142 claim. Platform takedown requests follow their own process and should be handled deliberately, on advice, rather than as an informal broadcast.

8. How much time should I give the recipient to comply?

A. Typically seven to fifteen days, depending on the scale of the infringement and what compliance actually requires. An unreasonably short deadline suggests posturing and does not help you before a court.

9. What should I demand in the notice?

A. Cessation of all use, removal from products, packaging, signage, website, applications, social media and marketplace listings, withdrawal of any pending trademark application, change of company name where relevant, transfer or cancellation of the domain, delivery up of infringing material, disclosure of accounts and suppliers, damages where claimed, and execution of a written undertaking in an enclosed format.

10. What evidence should I collect before sending a notice?

A. Purchase the infringing product with an invoice and preserve the packaging and photographs, obtain notarised screenshots of listings and advertisements with dates and URLs, archive the website, obtain MCA and GST records to establish the entity and scale, and prepare a side-by-side comparison chart. Collect all of it before dispatch, because listings disappear quickly afterwards.

11. How should the notice be sent?

A. Through Registered Post with Acknowledgement Due, and additionally by speed post, courier and email, with all dispatch and delivery records preserved. Proof of service becomes evidence if the matter reaches court.

12. To whom should the notice be addressed?

A. To the correct legal entity by its full registered name and constitution, at its registered office, with copies to branches and outlets. Where personal liability is asserted, directors or partners are addressed by name. A notice addressed to a brand name rather than the legal entity is defective.

13. What if the recipient claims they were using the name before me?

A. Section 34 protects a person who has used an identical or similar mark continuously from a date prior to your use or your registration, whichever is earlier. If their prior use is genuine and provable, your registration cannot be used to stop them, and a negotiated coexistence is usually the sensible outcome.

14. What defences can the recipient raise?

A. Principally Section 30, covering honest practices, descriptive use, use to identify genuine goods and exhaustion of rights; Section 34 for prior vested rights; and Section 35 for bona fide use of one’s own name. They may also counter-attack by seeking rectification of your mark under Sections 47 or 57.

15. Can the recipient get my trademark cancelled in response?

A. Yes. A rectification petition may be filed under Section 47 on the ground of non-use, or under Section 57 on the ground that the entry was wrongly made or remains wrongly on the register. This is why your own registration must be audited before the notice is drafted.

16. What happens if the recipient ignores the notice?

A. You proceed to institute a suit for permanent injunction, damages or account of profits and delivery up. Do not delay — undue delay after a notice weakens an application for interim injunction and gives the infringer an acquiescence argument.

17. Where can I file the infringement suit?

A. Section 134(2) permits the suit to be filed in a District Court within whose jurisdiction the plaintiff actually and voluntarily resides, carries on business or personally works for gain. This is broader than the ordinary rule under Section 20 CPC and is a significant advantage for the rights holder.

18. What reliefs can a court grant?

A. Under Section 135, an injunction, and at the plaintiff’s option either damages or an account of profits, together with delivery up of infringing labels and marks for destruction or erasure. Courts also grant ex parte ad interim injunctions, appoint Local Commissioners for search and seizure, and pass John Doe and dynamic injunction orders.

19. Is trademark infringement a criminal offence?

A. Yes, in defined circumstances. Falsifying a trademark, falsely applying a mark to goods or services, and selling goods bearing a false mark are offences under Sections 103 to 105, punishable with imprisonment of six months to three years and fine of ₹50,000 to ₹2,00,000. Criminal allegations in a notice must be accurate and supportable.

20. Someone has registered a company name similar to my trademark. Can I act?

A. Yes. Section 29(5) treats use of the mark as a trade name or part of a business name dealing in the same goods or services as infringement. Separately, Section 16 of the Companies Act, 2013 allows a trademark owner to apply to the Central Government for rectification of the company’s name within three years of its registration.

21. Someone is using my brand name in a domain name. What can I do?

A. Options include a cease and desist notice demanding transfer or cancellation, a complaint under the INDRP for .in domains or the UDRP for generic top-level domains, and an infringement or passing off suit. A registered trademark makes domain recovery substantially easier.

22. What is pre-institution mediation under Section 12A?

A. Section 12A of the Commercial Courts Act, 2015 requires pre-institution mediation before a commercial suit is filed, except where the suit contemplates urgent interim relief. Since most trademark suits are filed precisely for urgent interim relief, the exception commonly applies — but the position must be assessed before the notice is sent, not afterwards.

23. Should I always send a notice, or sometimes go straight to court?

A. Not always. In counterfeiting matters, or where evidence and stock will disappear once the infringer is alerted, going straight to court with an application for an ex parte injunction and a Local Commissioner is usually the correct strategy. A notice trades surprise for speed and cost, and that trade is not always worth making.

24. I have received an infringement notice. What should I do?

A. Do not ignore it, and do not reply in haste or admit anything. Verify the sender’s registration status and specification, assess whether your use falls within Section 30, 34 or 35, check whether you have prior use, preserve your own evidence of adoption and use, and obtain advice before responding within the stated period.

25. Can I claim damages in the notice itself?

A. You can state a claim for compensation, but a figure should be arrived at on some rational basis rather than asserted arbitrarily. Actual damages are ordinarily quantified in the suit, where accounts and disclosure are available, and courts also award punitive damages in appropriate cases.

26. What does Delhi Legal Company charge to draft an infringement notice?

A. The fee depends on the complexity of the matter, the extent of evidence gathering required and the number of recipients. We quote a written fee before starting, and we always begin with an enforceability assessment so that you are not paying for a notice that should not be sent.