Trademark Infringement Suit in Delhi

When a brand owner should sue

A trademark suit is worth bringing when another business is using a mark that buyers could mistake for yours, on the same or related goods or services, and a letter has not stopped it. The typical cases we see are a former distributor continuing to sell under the brand after the agreement ends, a competitor adopting a phonetically similar name, look-alike packaging on retail shelves, and online sellers listing copies under the brand’s name.

Before filing, three things need checking. First, what rights you hold: a registration in the right class, or only use and reputation, which makes the claim one of passing off rather than infringement. Second, the earliest date the other side used its mark, because a defendant who used it before your registration and your own first use has a defence under Section 34 of the Trade Marks Act. Third, the scale of the harm, which decides how hard to press for interim relief and how to value the suit.

The forum in Delhi

Intellectual property disputes are commercial disputes under the Commercial Courts Act, 2015, so the procedure of that Act applies: a strict timetable for pleadings, a statement of truth, and costs that follow the result. The value of the suit decides the court. Above two crore rupees, the suit is filed on the original side of the Delhi High Court, where the Intellectual Property Division created in 2021, under the Delhi High Court Intellectual Property Rights Division Rules, 2022, hears it. At or below that value, it goes to the district judge (commercial) in the district with jurisdiction.

Valuation is not a formality. A suit valued low to stay in a district court can limit the damages later claimed, and a suit valued high pays more court fee. We fix the value on the evidence of sales and harm, not on convenience.

Where a suit seeks urgent interim relief, it can be filed without the pre-institution mediation that Section 12A of the Commercial Courts Act otherwise requires. The court can reject a plaint where the claim of urgency is a device to skip mediation, so the plaint has to show why waiting would cause harm.

What goes into the plaint

A strong plaint answers the injunction questions before they are asked: is there a prima facie case, where does the balance of convenience lie, and will the harm be irreparable if the court waits. In practice that means:

• certified copies of the registration certificates, with the classes and goods;
• evidence of first use and continuous use, such as dated invoices, catalogues and advertising;
• annual sales and promotion figures, usually certified by a chartered accountant;
• samples or photographs of the infringing goods, test purchases with bills, and screenshots of online listings with dates;
• any earlier correspondence, including a cease-and-desist notice and the reply; and
• a comparison of the two marks side by side, for the court to see what a buyer sees.

Applications for an ex parte ad interim injunction under Order XXXIX of the Code of Civil Procedure, for a local commissioner, and for exemption from advance notice are filed with the plaint. Where the infringers are unknown, such as unidentified sellers, the court can pass orders against unnamed defendants.

The first hearing and after

At the first hearing the court may grant an ex parte injunction, appoint a local commissioner, or issue notice and hear both sides before deciding. If an ex parte order is passed, the plaintiff must comply with Order XXXIX Rule 3, including serving the papers on the defendant promptly; a failure here is a common ground for the order being vacated.

The defendant then has its own options: apply to vacate the injunction, file a written statement within the commercial-suit timetable, or settle. Settlement terms usually include a period to exhaust stock, an undertaking not to use the mark, and costs. If the suit goes on, the court frames issues, the parties file evidence by affidavit, and witnesses are cross-examined, often before a local commissioner appointed to record evidence.

An appeal against an order granting or refusing an interim injunction lies to a division bench. The appellate court does not rehear the matter afresh; under the principle in Wander v. Antox (1990) it interferes only where the first court’s discretion was exercised arbitrarily or ignored settled principles. That is another reason to get the first application right.

Defending a trademark suit

If you have been served with a suit or an injunction order, the first week matters. We check whether the plaintiff disclosed everything it should have, whether it delayed after knowing of your use, whether your use predates theirs, whether the common element of the marks is descriptive or common to the trade, and whether the registration itself is open to rectification. Where an ex parte injunction is causing serious harm, an application to vacate it under Order XXXIX Rule 4 can be listed quickly.

For an overall view of how the firm handles business litigation, see our corporate law firm in Delhi page; for disputes under a licence or distribution agreement with an arbitration clause, see arbitration.

Speaking to us

Send us the registration details, examples of the infringing use and any correspondence. We tell you at the first meeting whether a suit, a notice or a settlement approach is the better route, what the forum will be and what the first hearing will need. Call or WhatsApp 99115 44811, or write to manujalawyers@gmail.com.