Who Can Sue for Infringement of Trademark?

A trademark dispute begins with a threshold question: who has the legal right to bring the claim? Under Indian law, the answer depends on whether the mark is registered and on the claimant’s status in relation to that registration.

Registered proprietor

Section 28 of the Trade Marks Act, 1999 gives the registered proprietor, subject to the Act and any conditions on the registration, the exclusive right to use the mark for the registered goods or services and to obtain relief for infringement.

Registered user

The earlier version of this article stated too narrowly that only the proprietor could sue. Section 52 expressly provides that, subject to any agreement between the parties, a registered user may institute infringement proceedings in its own name as if it were the registered proprietor, while making the proprietor a defendant. A merely permitted user who is not a registered user does not receive that same statutory right under section 53.

What about an unregistered trademark?

Section 27 prevents an infringement action based on an unregistered trademark, but it preserves the common-law remedy of passing off. A business with sufficient goodwill may therefore seek relief against a misrepresentation that is likely to damage that goodwill even without a registration.

Relief and forum

Section 134 provides that infringement and passing-off suits are not to be instituted in a court inferior to a District Court having jurisdiction. Section 135 identifies remedies that may include injunctions, damages or an account of profits and delivery-up of infringing labels or marks, subject to the facts and statutory limits.

Standing can be affected by assignments, licences, registered-user arrangements and the exact chain of title. Specific disputes should therefore be reviewed with the underlying registration and agreements in hand.