Case Study:

Trade mark infridgement and

its enforcement in India
Background
A European company has been using a particular trade mark in relation to their products and services in the automotive industry
for a few decades. Since the trade mark of the European company held international reputation, it hesitated to register it in India.
Until recently, India had not been a priority market for the European company, which also believed it could rely on the protection of
unregistered trade marks in India. This would allow them to carry out any business in India without trade mark registration, thereby
saving costs. Following a consultation with an IP expert, they finally decided to register their trade mark to be on the safe side.

Over the last years, the trade mark has gained a significant reputation in the Indian market as it became associated with certain
quality of products and services.

Through a constant monitoring of the market in India, including its competitors and suppliers, the European company noticed that
a particular local manufacturer was producing the same products under an identical trade mark and trade dress including colour
and font combination.

They decided to consult an IP expert on how to best tackle this situation.

Actions taken
The IP expert informed the European company that in India they could take both civil and criminal action against trade mark
infringement. By lodging a criminal action, it could quickly obtain a search and seizure order to have the infringing goods confiscated
by the police. The civil action, which would take more time to process, would if successful lead to a permanent injunction ordering
the stop of the sale of the infringing products and the award of damages.

Initially, the European company approached the High court and filed a criminal complaint against the local manufacturer for
infringement of their trade mark to obtain a seizure warrant and to seize the goods. During the court proceedings, the company
successfully argued that the products of the local manufacturer were identical reproductions of the original product. Hence, the
court ordered the infringing party to abstain from using the trade mark and trade dress of the original product and seized the
infringing products.

The company also filed a civil suit, as a result of which the court ordered the local manufacturer to stop producing and selling the
infringing goods.

Despite the two previous court orders, the local manufacturer continued its infringing activities. The European company informed
the court that the infringer disobeyed the court’s orders and continued infringing on the company’s trade mark. The court noticed
that the infringer was a habitual offender that had had knowingly continued to infringe the products even after a court order.
Consequently, the court granted heavy penalties and permanently ordered the local manufacturer to stop infringing the products
of the trade mark holder.

Outcome
After continuous market monitoring and lengthy legal proceedings against the infringer, the European company achieved the
following:

• Criminal proceedings resulted in seizure of the infringing goods and penalty to the local manufacturer.

• Because the infringement of the product and trade mark had been wilfully conducted by the local manufacturer for a significant
period of time, the court awarded damages of 200 000 EUR to the European company.

• The court has also ordered a permanent injunction against the local manufacturer which banned the local manufacturer to
manufacture and sell similar products.
 Case Study: Trade mark infridgement and
its enforcement in India

Lessons learned
• Always register your trade marks even if your business or products are very well-known and you could rely on unregistered
trade mark protection. Trade mark registration always makes it easier to fight infringements and enforce your legal rights.
Unregistered trade mark enforcement is more complex, as the plaintiff has to demonstrate confusion in the market, as well as
actual or potential economic loss. In this case, the EU company might have had more difficulties in demonstrating this.

• It is possible to take both civil and criminal action against trade mark infringement. Criminal action will allow you to seize goods
through raids but will require close monitoring and following up with the police and hence it is quite draining on the internal
resources. Civil action will allow you to recover damages and costs and prevent future sale and manufacturing of the infringing
products.

• Constantly monitor the market to look for infringing products. Do not hesitate to take legal action against the infringer, even
repeatedly. In case of obvious and repeated infringement it is relatively easy to obtain an interim or permanent injunction to
stop the infringing party from copying your product or using your trade mark.

• Punitive damages awarded by the Indian courts are not as high as in other countries such as the EU or US.

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