How To File a Trademark Infringement Suit in India: A Step-by-Step Legal Guide

By the time a brand owner is ready to sue over Trade mark infringement, real damage is usually already underway, lost sales to a counterfeit, customer confusion, or a competitor riding on years of built-up goodwill. What often slows brand owners down at exactly the wrong moment is not the merits of their case, which are frequently strong, but uncertainty over process: which court has jurisdiction, whether a mandatory mediation step applies before filing, and how quickly an injunction can actually be secured. At Sharma Kemp Chambers, getting these procedural questions right at the outset is often what determines whether a brand owner secures an injunction within days, or loses months to an avoidable procedural setback.

This guide sets out how to actually file and pursue a Trade mark infringement suit in India, from the statutory framework and jurisdictional rules under the Trade Marks Act, 1999, through the Commercial Courts Act’s pre-institution mediation requirement (and a genuinely important recent exception carved out specifically for ongoing IP infringement), to interim relief, trial, and the parallel criminal route available for serious cases.

Quick Reference: Infringement, Passing Off, and Where to File

Before the detail, here is the framework I use with brand owners at the outset of an infringement dispute:

• A registered Trade mark gives you a statutory infringement action under Section 29 of the Trade Marks Act, 1999. An unregistered mark cannot support an infringement claim, but remains protectable through the common law action of passing off, expressly preserved by Section 27(2).
• You can sue where you are, not just where the defendant is. Section 134 of the Act gives Trade mark owners a genuinely valuable departure from the ordinary civil procedure rule: you can file where you reside or carry on business, not only where the defendant is located, which matters considerably when an infringer is based far from your own operations.
• Most commercial-value Trade mark suits need pre-institution mediation first, unless you’re seeking urgent interim relief. Section 12A of the Commercial Courts Act, 2015 makes this mandatory, but the Supreme Court has recently clarified, specifically in the IP context, that ongoing infringement generally qualifies for the urgency exemption.
• An interim injunction is usually the real objective, not the final decree, since stopping the infringing use quickly is what actually protects the brand while the case proceeds, and Indian courts can and do grant ex parte ad interim injunctions in genuinely urgent, well-supported cases.
• A parallel criminal complaint is available for serious cases, particularly counterfeiting, and can move faster than a civil suit for actually seizing infringing goods, though it does not itself provide damages or a permanent injunction.

The Legal Framework

Infringement Under Section 29

Section 29 of the Trade Marks Act, 1999 sets out what constitutes infringement of a registered Trade mark: broadly, use by an unauthorised party of an identical or deceptively similar mark in relation to identical or similar goods or services, in a manner likely to cause confusion or to suggest an association with the registered proprietor. The section also extends protection to well-known marks against use on dissimilar goods or services where such use would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the registered mark.

Passing Off Where the Mark Is Unregistered

Section 27(1) makes clear that no infringement action lies for an unregistered Trade mark, but Section 27(2) expressly preserves the common law right of action against passing off, requiring the claimant to establish the now well-settled three elements: goodwill or reputation attached to the mark, misrepresentation by the defendant leading, or likely to lead, the public to believe the defendant’s goods or services are those of the claimant, and damage, or the likelihood of damage, resulting from that misrepresentation. Passing off claims are frequently brought alongside infringement claims even where the mark is registered, since it offers an alternative basis for relief where any technical gap exists in the infringement case.

Jurisdiction: The Advantage Under Section 134

Ordinarily, under Section 20 of the Code of Civil Procedure, 1908, a suit must generally be filed where the defendant resides or carries on business, or where the cause of action arose. Section 134 of the Trade Marks Act, 1999 provides a materially more favourable rule specifically for Trade mark infringement and passing off suits: the plaintiff can file in the district court (or the appropriate Commercial Court) within whose jurisdiction the plaintiff actually resides or carries on business, regardless of where the defendant is located. This provision was deliberately designed to spare brand owners the burden of chasing infringers across the country, though it is not unlimited: courts scrutinise claimed jurisdiction carefully, particularly where a plaintiff attempts to manufacture jurisdiction through a token local presence or an isolated local sale with no genuine connection to its business.

Reliefs Available Under Section 135

Section 135 sets out the reliefs a court can grant in a suit for infringement or passing off: an injunction (on such terms as the court considers appropriate), and, at the plaintiff’s option, either damages or an account of the defendant’s profits, together with an order for delivery-up of infringing labels and marks for destruction or erasure. Section 135(2) specifically empowers courts to grant an ex parte injunction or other interlocutory relief, including for the discovery of documents, preservation of infringing goods pending disposal of the suit, and restraining the defendant from disposing of assets in a manner that might adversely affect the plaintiff’s ability to recover damages.

Interim Injunctions: The Practical Heart of Most Infringement Suits

For most brand owners, securing an interim injunction quickly matters more than the eventual final decree, since a final decree years into litigation offers little value if the infringement has continued unchecked throughout. Indian courts apply the well-established three-part test for interim injunctions, prima facie case, balance of convenience, and irreparable injury, as consolidated by the Supreme Court in Wander Ltd v Antox India Pvt Ltd, 1990 Supp SCC 727, and routinely applied in Trade mark matters. Where the infringement is clear-cut and the delay in seeking relief has been reasonably explained, courts frequently grant an ex parte ad interim injunction at the very first hearing, restraining the defendant pending a full hearing on the interim injunction application.

Pre-Institution Mediation: Mandatory, But With a Critical IP Exception

For commercial suits (which most Trade mark infringement suits of any real value are, given the Commercial Courts Act, 2015’s specified value threshold), Section 12A of that Act requires the plaintiff to first attempt pre-institution mediation, unless the suit “contemplates any urgent interim relief.” The Supreme Court held in Patil Automation Pvt Ltd v Rakheja Engineers Pvt Ltd (2022) 10 SCC 1 that this requirement is mandatory, with effect prospectively from 20 August 2022, and that a suit filed in violation of it is liable to be rejected under Order VII Rule 11 of the Code of Civil Procedure, 1908.

This raised a genuinely difficult practical question for years: does an ongoing Trade mark infringement automatically qualify for the “urgent interim relief” exemption, or does a plaintiff who has known about the infringement for some time before filing risk having their claimed urgency questioned? The Supreme Court resolved this specifically in the intellectual property context in Novenco Building and Industry A/S v Xero Energy Engineering Solutions Pvt Ltd (2025 INSC 1256), decided on 27 October 2025, holding that a suit alleging continuing infringement of intellectual property rights and seeking an interim injunction does contemplate urgent interim relief within the meaning of Section 12A, and is therefore generally exempt from the mandatory mediation requirement, even where there has been some delay between discovering the infringement and filing suit. The Court’s reasoning is worth noting directly: urgency in a case of continuing wrong “does not lie in the age of the cause but in the persistence of the peril,” meaning the relevant question is whether the infringement is ongoing and causing continuing harm, not merely how long the plaintiff took to file. This is a significant and welcome clarification for brand owners, since it removes a genuine procedural trap that had previously seen several IP suits rejected at the threshold purely over the mediation question. That said, the exemption is not automatic or unconditional: a plaintiff still needs to genuinely and credibly plead urgency and continuing harm, since a claim of urgency raised as a bare formality, without substance, remains vulnerable to challenge.

The Criminal Route: A Parallel, Not Alternative, Remedy

Sections 103 and 104 of the Trade Marks Act, 1999 criminalise the application of a false Trade mark or false trade description, and the sale of goods bearing such marks, with punishment extending to imprisonment of up to three years and a fine, alongside enhanced penalties for repeat offences under Section 105. Critically, Section 115(4) makes these offences cognizable, meaning police can conduct search and seizure of counterfeit goods without needing a prior court warrant, provided they are satisfied of the necessary grounds (typically supported by an opinion from the Registrar of Trade Marks on the marks in question). For brand owners dealing with organised counterfeiting, a criminal complaint alongside the civil suit can achieve rapid, on-the-ground seizure of counterfeit stock that a civil suit alone, even with an interim injunction, may take longer to achieve, though the criminal route does not itself provide damages or a permanent civil injunction, making the two remedies genuinely complementary rather than substitutes for one another.

Step-by-Step: Filing and Pursuing a Trade mark Infringement Suit

Step 1: Confirm Your Trade mark Rights and Gather Evidence

Compile your Trade mark registration certificate (or, for a passing-off claim, evidence of prior use, market presence, and goodwill), and gather clear evidence of the infringement itself, purchase receipts, photographs, screenshots, packaging samples, and, where relevant, a certified test purchase report documenting the infringing goods or services.

Step 2: Send a Cease-and-Desist Notice (Where Appropriate)

In most cases, a formal cease-and-desist notice is a sensible first step, both as a genuine attempt at resolution and as part of establishing a clear timeline for any later urgency argument. In cases of serious counterfeiting or where advance notice would allow the infringer to destroy evidence or dispose of stock, proceeding directly to an ex parte interim injunction application without prior notice may be the more appropriate course.

Step 3: Determine the Correct Forum and Confirm Jurisdiction Under Section 134

Identify the appropriate Commercial Court or Commercial Division with jurisdiction where you reside or carry on business, and prepare to demonstrate that jurisdictional basis clearly in the plaint, since a jurisdictional challenge is one of the most common early battlegrounds in Trade mark litigation.

Step 4: Assess Whether Section 12A Pre-Institution Mediation Applies

Where the infringement is ongoing and you are seeking an interim injunction, build a clear, well-substantiated case for urgency into your plaint from the outset, following the framework confirmed in Novenco, rather than treating the mediation exemption as automatic. Where there is no genuine urgency, for instance where you are solely pursuing damages for past infringement that has already ceased, be prepared to complete pre-institution mediation before filing.

Step 5: Draft and File the Plaint, With the Interim Injunction Application

File the plaint under Sections 134–135 of the Trade Marks Act, 1999, pleading infringement (and passing off, where relevant, as an alternative or additional cause of action), supported by an application for an interim and, if appropriate, ex parte ad interim injunction, addressing prima facie case, balance of convenience, and irreparable harm directly and with specific evidence, rather than in general terms.

Step 6: Pursue Ancillary Relief Where Warranted

In cases involving counterfeit manufacturing or numerous, hard-to-identify online infringers, consider seeking the appointment of a local commissioner to inspect and seize infringing goods and material at the defendant’s premises, and, where the infringers are largely unidentified (for instance, an unknown number of counterfeit sellers operating under similar aliases), a “John Doe” (in Indian practice, often styled against “Ashok Kumar”) order restraining unidentified infringers more broadly.

Step 7: Proceed Through Trial to Final Relief

Once interim relief is secured, the suit proceeds through the ordinary stages of written statement, evidence, and final arguments, concluding in a decree that can include a permanent injunction, an award of damages or an account of profits (at the plaintiff’s election), and an order for delivery-up or destruction of infringing material.

Step 8: Consider the Criminal Route in Parallel for Serious Counterfeiting

Where the infringement involves clear counterfeiting, file a parallel criminal complaint, supported by the Registrar of Trade Marks’ opinion where required, to enable police search and seizure action that can move considerably faster than the civil process for physically removing counterfeit stock from the market.

Practical Checklist for Brand Owners

• Keep your Trade mark registrations current and your evidence of use well-organised, since both directly determine how strong your infringement or passing-off case is, and how quickly a court will grant interim relief.
• Act promptly once you discover infringement. While Novenco meaningfully eased the mediation-exemption risk for continuing infringement, unexplained delay still weakens the “balance of convenience” and “irreparable harm” elements of the interim injunction test itself, independent of the Section 12A question.
• Document the infringement thoroughly before filing, including dated evidence (test purchases, screenshots with visible dates, packaging samples), since this evidence is central to securing an ex parte injunction at the first hearing.
• Choose your forum deliberately using Section 134, filing where you reside or carry on business rather than defaulting to where the defendant happens to be located, provided that jurisdictional basis is genuine and can be clearly demonstrated.
• Consider the criminal route early in genuine counterfeiting cases, since police search and seizure can achieve a faster physical result than a civil injunction alone, and the two remedies work well pursued in parallel.

Two Hypothetical Scenarios

Scenario 1: Fast-Track Interim Injunction Against Ongoing Infringement

A registered footwear brand discovers a competitor selling shoes under a deceptively similar mark, with sales continuing in real time across multiple retail outlets. The brand owner gathers test-purchase evidence, sends a cease-and-desist notice that goes unanswered, and files a commercial suit under Sections 134–135, seeking an ex parte ad interim injunction, expressly pleading the continuing nature of the infringement and the urgency this creates, consistent with the Novencoframework. Given the clear evidence and the ongoing nature of the harm, the court grants an ex parte ad interim injunction at the first hearing, without requiring prior pre-institution mediation.

Scenario 2: Counterfeiting Case Pursued Through Both Civil and Criminal Routes

A well-known consumer goods brand discovers a network of sellers distributing counterfeit versions of its product bearing a near-identical mark and packaging, sourced from an unidentified manufacturing operation. The brand owner files a civil suit seeking a permanent injunction and damages, along with an application for appointment of a local commissioner to inspect and seize counterfeit stock at identified premises, and, given the number of unidentified sellers involved, a John Doe order restraining further unidentified infringers from dealing in counterfeit goods bearing the mark. In parallel, given the clear evidence of deliberate counterfeiting, the brand owner’s counsel files a criminal complaint, supported by the Registrar of Trade Marks’ opinion, enabling police to conduct search and seizure at the identified premises considerably faster than the civil process alone would allow.

Conclusion

Filing a Trade mark infringement suit in India is, on paper, a well-defined process: establish your rights under Section 29 or the common law of passing off, use Section 134’s favourable jurisdiction rule to file where you actually operate, and seek the interim relief that genuinely protects your brand while the case proceeds. In practice, the businesses that come out of infringement litigation quickly and effectively are the ones that treat the procedural questions, jurisdiction, evidence, and, critically, the pre-institution mediation exemption, as seriously as the substantive merits of their case. The Supreme Court’s clarification in Novenco removed a genuine, longstanding procedural trap for IP owners pursuing urgent relief against ongoing infringement, but it rewards plaintiffs who plead urgency properly and with real substance, not those who treat the exemption as a formality. Combined with a well-evidenced interim injunction application and, where counterfeiting is involved, a parallel criminal complaint, this remains one of the most effective enforcement toolkits available to brand owners anywhere.

Need Legal Advice?

For specialist advice on Trade mark infringement suits, interim injunctions, and brand enforcement in India, contact Ujjwal Sharma MCIArb at Sharma Kemp Chambers.

Sources

1. Trade Marks Act, 1999, Government of India Legislative Department
2. Commercial Courts Act, 2015, India Code
3. Code of Civil Procedure, 1908, Government of India Legislative Department
4. Supreme Court of India, Wander Ltd v Antox India Pvt Ltd, 1990 Supp SCC 727
5. Supreme Court of India, Patil Automation Pvt Ltd v Rakheja Engineers Pvt Ltd, (2022) 10 SCC 1
6. Supreme Court of India, Novenco Building and Industry A/S v Xero Energy Engineering Solutions Pvt Ltd, 2025 INSC 1256