In short. If another business is using a name, logo or packaging confusingly close to your brand, you can file a suit for trademark infringement (for a registered mark) or passing off (registered or not) in the Delhi High Court's Intellectual Property Division. An interim injunction, sometimes ex parte, can come at the first hearing; the full suit usually takes two to four years, though many settle much sooner. Before anything else, buy the copied product, keep the invoice and screenshots, and pull your registration certificates.
Is this your situation?
- A competitor has launched a product under a name or logo that customers are mistaking for yours.
- Copies of your packaging, colour scheme or label are being sold in markets or on e-commerce sites.
- A former distributor or franchisee keeps using your brand after the agreement ended.
- Your brand is not registered yet, but you have used it for years and built a reputation.
- Someone has applied to register a mark close to yours and has started selling under it.
- You have received a cease and desist notice or a Delhi High Court summons alleging that your brand infringes someone else's.
- Unknown sellers are using your brand in fake websites, social media ads or marketplace listings.
Infringement and passing off: two claims, often filed together
Infringement is a statutory claim available only to the owner of a registered trademark. Under Section 29 of the Trade Marks Act 1999, a person infringes if, without permission, they use in the course of trade a mark identical with or deceptively similar to the registered mark, for identical or similar goods or services, in a way likely to cause confusion. For marks with a reputation in India, Section 29(4) extends protection to dissimilar goods where the use takes unfair advantage of or harms that reputation. Using your mark as part of a trade name, in advertising, or even on labels and packaging can also infringe.
Passing off is the older, common law claim, preserved by Section 27(2). It protects goodwill, whether or not the mark is registered. You have to show three things: that you have goodwill in the mark or get-up among the public, that the defendant's use is a misrepresentation likely to make people think its goods are yours or connected to you, and that this has caused or is likely to cause damage. Passing off also covers trade dress, colour combinations and packaging that may not be registered.
Most brand owners plead both. If your mark is registered, infringement is easier to prove because you need not establish reputation. Passing off covers what registration does not, such as the overall look of a product. Our guide on how passing off differs from infringement explains the difference with examples.
The legal tests the court applies
Deceptive similarity
The court compares the marks as a whole, from the viewpoint of an average consumer with imperfect recollection, not by placing them side by side. In Cadila Health Care v. Cadila Pharmaceuticals (2001), the Supreme Court listed the factors: the nature of the marks, their degree of resemblance in sound, look and idea, the nature of the goods, the class of buyers and the mode of purchase. It also said a stricter approach applies to medicines, where confusion can harm health.
Interim injunction
Wander v. Antox (1990) sets the test: a prima facie case, balance of convenience and irreparable harm. In Midas Hygiene Industries v. Sudhir Bhatia (2004), the Supreme Court said that in infringement and passing off cases an injunction should normally follow once a case is made out, and that delay by itself is not a reason to refuse one where the adoption was dishonest.
Section 134 and Section 20 CPC
An infringement suit can be filed where the plaintiff resides or carries on business, under Section 134(2). After Indian Performing Rights Society v. Sanjay Dalia (2015), if the cause of action arose where the plaintiff has a branch, the suit should be filed there rather than at a distant head office. A pure passing off claim follows Section 20 CPC: where the defendant is, or where the cause of action arose.
Section 135 reliefs and Section 124 stay
The court can grant an injunction, damages or an account of profits, and delivery up of infringing labels and goods for destruction. If the defendant challenges the validity of your registration and the court finds the plea prima facie tenable, the issue of validity goes to rectification under Section 57 while the rest of the suit waits, as explained in Patel Field Marshal Agencies v. P.M. Diesels (2017). Interim injunctions can still be granted meanwhile.
Why so many brand owners sue in Delhi: the IP Division
The Delhi High Court has one of the busiest intellectual property dockets in India. After the Tribunals Reforms Act 2021 abolished the Intellectual Property Appellate Board, the High Court set up an Intellectual Property Division and framed the Delhi High Court Intellectual Property Rights Division Rules 2022. The IPD hears infringement and passing off suits within the High Court's original jurisdiction, rectification petitions, and appeals from the Trade Marks Registry and the Patent Office. Our guide on the Delhi High Court's IP Division explains how it is organised.
The IPD Rules give the court tools suited to brand cases: confidentiality clubs for sensitive documents, hot-tubbing of experts, mediation at an early stage, and active case management. Ex parte orders appointing local commissioners to seize counterfeit stock, and orders directing marketplaces and domain registrars to take down listings or suspend domains, have become routine in suitable cases.
Trademark disputes are commercial disputes under Section 2(1)(c)(xvii) of the Commercial Courts Act 2015, so the commercial procedure applies: strict document disclosure, a 120-day limit for the written statement, and costs that usually follow the result. Suits valued above Rs 2 crore (check the current limit) go to the High Court; smaller suits go to a district commercial court in Delhi. Valuation must be genuine, based on the value of the injunction and the damages claimed.
Which court hears it and why: getting jurisdiction right
Jurisdiction is the defendant's first line of attack, so it should be settled before filing. A Delhi-based brand owner with its registered office or principal place of business in Delhi can file an infringement suit here under Section 134(2) even if the infringer is in Ludhiana or Surat. A brand owner headquartered in Mumbai with only a branch in Delhi should file in Delhi only if the infringement or the sales giving rise to the claim happened here, following the Sanjay Dalia principle.
For online infringement, the Delhi High Court held in Banyan Tree Holding v. A. Murali Krishna Reddy (2009) that a website accessible in Delhi is not enough by itself; there must be something showing the defendant purposefully targeted customers in Delhi, such as sales or deliveries here. That is why a trap purchase delivered to a Delhi address, with the invoice and courier record, is often the first piece of evidence collected.
Appeals from the single judge's orders and judgments in commercial IP suits go to a Division Bench of the High Court as the Commercial Appellate Division, under Section 13 of the Commercial Courts Act, within 60 days. Our page on commercial appeals covers that step.
Before you file: building the evidence
A trademark suit is won or lost on the papers filed with the plaint. Under the commercial procedure, documents not filed then may be shut out later. The core set is the same in almost every case: registration certificates or the application status, proof of first use and continuous use, sales figures year by year (preferably certified by a chartered accountant), advertising spend, sample invoices from different years and cities, press coverage, and evidence of the defendant's use.
Evidence of the defendant's use should be gathered carefully. Make a test purchase, preferably through an independent investigator, keep the product, the bill and the packaging, and photograph the shop or warehouse. For online sales, take dated screenshots of the listing, order through the platform and keep the delivery record. Electronic evidence needs a certificate under Section 63 of the Bharatiya Sakshya Adhiniyam 2023 (old Section 65B of the Evidence Act). Search the Trade Marks Registry for any application the defendant has filed; if it is pending, oppose it within four months of advertisement under Section 21.
When Advocate B.K. Singh reviews a brand file, the first thing he looks for is the date of first use, documented by an invoice or advertisement, because priority of adoption decides many of these cases. A brand registered in 2022 but used since 2014 should prove 2014, not 2022.
Should you send a cease and desist notice first?
A legal notice is not compulsory before a trademark suit, and in some cases it does more harm than good. Sending one to a counterfeiter can lead to stock being moved overnight, which defeats a local commissioner's raid. Sending one to a small trader who adopted a similar name innocently, on the other hand, often ends the matter with a written undertaking and a change of name within weeks, without any court case.
Section 12A pre-institution mediation under the Commercial Courts Act does not apply where urgent interim relief is genuinely sought, which is the usual position in infringement cases. The Supreme Court in Yamini Manohar v. T.K.D. Keerthi (2023), itself a trademark case, said the court can look at whether the urgency is real. A brand owner who knew of the infringement for two years and did nothing should expect questions.
Be careful with threats. Section 142 of the Trade Marks Act allows a person who is threatened with infringement proceedings without justification to sue for a declaration and an injunction against the threats. A notice should be firm and factual, not a bluff.
Step by step: a trademark suit in the Delhi High Court
Investigate and collect evidence
Make test purchases, take screenshots, and record where and how the infringing goods are sold. Pull your registration certificates, user evidence and sales figures. Check the Registry for the defendant's applications and any opposition window that is still open.
Decide the strategy and the court
Choose between a notice, an opposition, a suit, or a combination. Confirm jurisdiction under Section 134 or Section 20 CPC and value the suit. Decide whether to seek an ex parte order, a local commissioner or a John Doe order.
Draft and file the plaint
The plaint sets out your adoption, use, registration, reputation, the defendant's use and the confusion caused. It is filed with every document, a statement of truth, the electronic evidence certificate and an application for interim injunction, along with applications for a local commissioner and exemption from Section 12A where urgency is shown.
First hearing and interim orders
The judge may grant an ex parte ad interim injunction, appoint a local commissioner to visit the defendant's premises and seize or inventory goods, and direct marketplaces or registrars to remove listings or block domains. Summons is issued. If no ex parte order is passed, notice goes to the defendant on the injunction application.
Written statement and replication
The defendant must file its written statement within 120 days of service at the outside. Defences usually include prior use, dissimilarity, descriptiveness, honest concurrent use and challenges to the validity of the registration.
Admission and denial, issues and mediation
Documents are admitted or denied before the Joint Registrar. Issues are framed and a case management hearing fixes the timetable. Many suits are referred to mediation, where settlements commonly include a change of mark, a phase-out period for old stock, costs and an undertaking recorded by the court.
Evidence and final hearing
Witnesses give evidence by affidavit and are cross-examined, often before a local commissioner. After arguments the court decides on a permanent injunction, damages or account of profits, delivery up and costs.
Time and cost at each stage
| Stage | Typical time | Court fee and costs (general) |
|---|---|---|
| Investigation and test purchases | One to four weeks | Investigator charges and the cost of goods bought; no court fee |
| Drafting and filing the plaint | One to three weeks | Court fee based on the valuation of the injunction and damages claimed; check the current Delhi schedule |
| First hearing, ex parte injunction and local commissioner | Often the first or second listing after filing | Local commissioner's fee, usually paid by the plaintiff at first |
| Written statement and replication | 30 to 120 days, then about 30 days | Small fees on applications |
| Decision on the interim injunction after hearing both sides | Three to twelve months | Costs may be imposed on a party |
| Mediation | One to four months | No fee at the court's mediation centre |
| Trial and judgment | Two to four years from filing | Damages, account of profits and actual costs may be awarded |
Documents you will need
Your brand
- Trademark registration certificates and the legal use certificate, or the application status and examination report
- Earliest invoices, advertisements and packaging showing the date of first use
- Year-wise sales and advertising figures, certified by a chartered accountant
- Sample invoices from different years and cities
- Press coverage, awards for the product (not the firm) and social media following
- Assignment deeds or licence agreements if the mark changed hands
The infringement
- The infringing product, its packaging and the purchase invoice
- Investigator's report with photographs of the shop or warehouse
- Dated screenshots of online listings, ads and websites
- Order confirmation and delivery record for online purchases to a Delhi address
- The defendant's trademark application, if any, from the Registry
- Complaints or messages from confused customers, distributors or retailers
Ex parte injunctions, local commissioners and John Doe orders
In clear cases of counterfeiting or slavish copying, the Delhi High Court may grant an injunction at the first hearing without hearing the defendant. The plaintiff must make full and honest disclosure, including any earlier dealings with the defendant, any pending opposition, and any delay. An ex parte order obtained by hiding a material fact can be vacated, with costs.
Local commissioners are often appointed in the same order to visit the defendant's premises, take an inventory of infringing goods, seize them and hand them back on superdari, and report to the court. The order is kept confidential until executed. For unknown infringers, such as sellers operating from market stalls or anonymous websites, the court can pass orders against unnamed defendants, sometimes called John Doe or Ashok Kumar orders, which can be executed against persons identified later.
Online infringement is handled through directions to e-commerce platforms to remove listings and disclose seller details, to domain registrars to suspend or transfer domains, and to telecom authorities to block rogue websites. Disputes centred on a domain name alone are covered on our page on domain name disputes, and website blocking for pirated content on the page on copyright and piracy cases. Our guide on ex parte injunctions in trademark cases explains what the court expects to see.
If you are the defendant: answering a trademark suit
Do not ignore a Delhi High Court summons or an ex parte order. Comply with the injunction while you challenge it, because disobedience invites contempt proceedings and costs. An application under Order 39 Rule 4 CPC to vacate an ex parte order can be filed quickly, and the court will hear it once the defendant appears.
The defences that carry weight are factual. Prior use is one: under Section 34, the registered owner cannot stop a person who has used the mark continuously from a date earlier than both the owner's use and registration. Others include genuine dissimilarity when the marks are seen as a whole, use of a descriptive or common word in its ordinary sense, bona fide use of one's own name under Section 35, and challenges to the plaintiff's registration through rectification. The defendant's own documents of adoption, such as the date of incorporation, the first invoice and the reason for choosing the name, should be on record from the start.
Sometimes the sensible answer is to rebrand. A small business that adopted a name close to a well-known mark may spend more on two years of litigation than on a new name. A negotiated settlement can include time to exhaust old stock and an agreement on costs. When Advocate B.K. Singh advises a defendant, he sets out both the defences and the cost of a change of name side by side, so that the client chooses with open eyes.
Damages, costs and criminal remedies
The Delhi High Court awards damages and costs in trademark cases, including against defendants who stay away after being served. Courts look at the defendant's sales, the scale of copying, and conduct during the case. A plaintiff who wants damages should file sales and loss evidence and ask for disclosure of the defendant's accounts; a bare claim for a round figure is rarely awarded in full. Costs under the commercial procedure usually follow the result.
Chapter XII of the Trade Marks Act also makes falsifying a trademark and selling goods with a false mark offences under Sections 103 and 104, punishable with imprisonment and fine. Police can search and seize, but under the proviso to Section 115(4) an officer must first obtain the opinion of the Registrar of Trade Marks before searching for offences relating to a trademark. Criminal complaints are useful against large-scale counterfeiting; a civil suit is usually better for disputes between legitimate businesses about similar names.
If the real problem is that a confusingly similar mark has been registered in someone else's name, a rectification petition under Section 57 removes it from the Register. That is covered on our page on trademark rectification and cancellation.
Former distributors, franchisees and licensees who keep using your mark
Some of the clearest infringement cases involve people who once had permission. A distributor whose agreement has ended, a franchisee who stopped paying royalty, or a licensee whose licence has expired often carries on with the same signboard, packaging and website. Once the permission ends, continued use is use without consent, and Section 29 applies like it would to a stranger. The court also tends to view the conduct of a former business partner who trades on your goodwill strictly, because the customer has every reason to believe the connection continues.
The agreement itself shapes the case. Check the termination clause, any notice period, any clause allowing sale of existing stock for a fixed time after termination, and the arbitration clause. If the agreement has an arbitration clause, the money claims will usually go to arbitration. Whether the infringement claim after termination also goes there, or stays in court, depends on the wording of the clause and the relief sought, and the case law is not uniform. Either way, urgent protection can be sought from the court, in a suit or under Section 9 of the Arbitration and Conciliation Act 1996, so that choice should be made carefully at the start.
Collect the agreement, the termination notice with proof of delivery, photographs of continued use after termination, and any royalty or invoice records showing when the relationship ended. A letter recording that permission has ended, and that any further use is unauthorised, should go out promptly; it removes any later argument about implied consent.
Mistakes that weaken trademark cases
- Waiting too long. Delay alone does not defeat a dishonest copier, but it weakens claims of urgency and the chance of an ex parte order.
- Weak proof of first use. Without early invoices or advertisements, priority becomes a matter of oral evidence, which is easy to dispute.
- Hiding past dealings. Failing to disclose a prior settlement, opposition or correspondence with the defendant can cost you an ex parte order and invite costs.
- Filing in the wrong city. Section 134 and Sanjay Dalia decide where a company with branches should sue; a jurisdiction objection can set the case back months.
- Not using the opposition window. If the copier has applied to register its mark, missing the four-month opposition period means fighting the registration later in rectification.
- Ignoring the 120-day limit as defendant. A written statement filed after 120 days from service will not be taken on record.
A made-up example: a sweets brand and an online copycat
Here's a made-up example. A family business in Karol Bagh has sold sweets and namkeen under the mark 'SHAHI MITHAAS' since 2009, with registrations in Classes 29, 30 and 35 and a distinctive maroon and gold box. In 2025 a new seller in Faridabad began selling 'SHAAHI MITHAS' in a nearly identical maroon and gold box, mainly through its own website and a food delivery platform, with deliveries across Delhi.
The family placed two orders to addresses in Rajouri Garden and Lajpat Nagar, kept the boxes and invoices, took dated screenshots, and found that the Faridabad seller had applied to register its mark in Class 30. Their lawyer filed an opposition to that application and, separately, a suit for infringement and passing off in the Delhi High Court, pleading Section 134(2) because the plaintiff carried on business in Delhi and the sales had reached Delhi customers. The plaint attached sales figures from 2009, early invoices and photographs of the old boxes.
At the first hearing the court considered the similarity of the marks and the get-up and the plaintiff's long use, and could grant an ad interim injunction and direct the delivery platform to take down the listings. The defendant then appeared and offered to change its name and packaging within a fixed time. The settlement, recorded in the IPD with costs, ended the suit; the opposition was withdrawn after the defendant abandoned its application.
What to do this week
Buy the copied product and keep it sealed with the invoice. Take dated screenshots of any online listing and order one delivery to a Delhi address. Pull your registration certificates and the earliest invoice or advertisement showing your use. Check the Trade Marks Registry for any application by the copier and note the advertisement date. Our guide on how long a trademark suit takes in the Delhi High Court will help you plan. Fees are discussed at the first meeting and agreed in writing, stage by stage.
For advice on your brand documents and the copier's use, or for updates on how the Delhi High Court is deciding trademark cases, contact Advocate B.K. Singh.
Frequently asked questions
Can I sue for trademark infringement if my brand is not registered?
Not for statutory infringement, which needs a registered mark. You can sue for passing off, which protects goodwill built through use, if you can show reputation, misrepresentation by the defendant and likely damage. Many brand owners file both claims together once registration comes through.
How fast can the Delhi High Court stop a copycat brand?
In clear cases, an ad interim injunction can be granted at the first hearing, sometimes without notice to the defendant. If the court prefers to hear both sides, the interim decision may take a few months. Speed depends heavily on how quickly you act and how complete your evidence is.
Can I file a trademark case in Delhi if the infringer is in another state?
Yes, for infringement, if you carry on business in Delhi and the cause of action is connected to Delhi, under Section 134(2). For a pure passing off claim, you need the defendant to be in Delhi or the cause of action, such as sales, to have arisen here. Online sales delivered in Delhi often provide that link.
What is a John Doe order in trademark cases?
It is an order against unnamed or unknown defendants, used where counterfeit goods are sold by persons whose identities are not known. It allows the order to be executed against persons identified later. The Delhi High Court has used such orders in counterfeiting and piracy cases.
What happens if I receive a notice that my brand name infringes someone else's?
Do not ignore it and do not reply in anger. Check when you first used your name, whether the other side's mark is registered and for what goods, and whether your use could really confuse customers. A measured reply, or a negotiated change of name, often avoids litigation.
Can I get damages in a trademark infringement suit?
Yes. The court can award damages or an account of the defendant's profits, along with costs. You need evidence of sales, losses or the defendant's turnover; the court rarely awards large round figures without supporting material.
Is mediation compulsory before filing a trademark suit?
Section 12A mediation applies unless urgent interim relief is genuinely sought. Most infringement suits do seek urgent relief, but the court checks that the urgency is real, as the Supreme Court said in Yamini Manohar (2023).
What if the copier also has a trademark registration?
Registration is not a defence against a prior user or against an earlier registered mark. You can challenge their registration by a rectification petition under Section 57, and the court can deal with validity under Section 124 while the suit is pending.