Ask Our Expert!

Trademark Infringement: Legal Remedy, Landmark Cases & More

Trademark Infringement

In today’s world protection of intellectual property has become consequential. Intellectual property protection encourages individuals and companies to invest their time and resources in creating new ideas and products, knowing that they can reap the benefits of their efforts through legal protection. Intellectual property protection can ensure that consumers are not misled or deceived by imitations or counterfeits of products, which may be of lower quality or even dangerous. Further, it helps to stimulate economic growth and enhance international competitiveness.

Four main types of Intellectual Property that are legally recognized and protected:

  1. Trademarks – The Trademarks Act, 1999
  2. Patents – The Patent Acts, 1970
  3. Copyrights – The Copyright Act, 1957
  4. Designs – The Designs Act, 2000

What is Trademark?

As per Section 2(1)(zb) of the Trademarks Act, 1999, "trademark" means a mark capable of being represented graphically and can distinguish the goods or services of one individual or organization from those of others. This can include various elements such as the shape of the goods, their packaging, and a combination of colors, among others.

It further clarifies that a "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colors.

What is a Trademark Infringement?

Trademark infringement refers to the unauthorized usage of the registered trademark. It occurs when someone uses a trademark that is identical or confusingly like another person's trademark in connection with the sale, advertising, or promotion of goods or services.

Trademark infringement can hamper the reputation as well as the brand value of the registered trademark owner and can lead to confusion among the public.

In India, registered trademarks have been given legal protection under the Trademarks Act,1999.

Legal Remedies In Case of Trademark Infringement

The following are three types of remedies available: -

  1. Civil Remedies
  2. Injunction

An injunction is a court order that directs the infringing party to stop using the infringing mark, thereby preventing any further unauthorized usage of the trademark. It is a powerful legal remedy that is used to protect the rights of the trademark owner. The court may grant either a temporary injunction, which is valid for a limited period or a permanent injunction, which is valid for an indefinite period.

  • Damages

Damages refer to the monetary compensation that the infringing party is liable to pay to the trademark owner for the losses suffered due to the infringement. This remedy is aimed at compensating the trademark owner for the financial loss or damage to the reputation suffered as a result of the infringement. The amount of damages is usually calculated by taking into consideration various factors such as the actual loss suffered by the trademark owner, the profits earned by the infringing party, and the extent of the harm caused to the trademark owner's goodwill and reputation. The court may award either compensatory damages or punitive damages or both, depending on the circumstances of the case.

  • Custody of Infringing materials

The court may order the infringing party to surrender or deliver all the infringing materials, which may include goods, products, labels, packaging, promotional materials, or any other materials that bear the infringing trademark. This remedy is aimed at preventing further infringement and protecting the trademark owner's rights. The court may also order the destruction or disposal of the infringing materials to prevent their further use. In cases where the infringement relates to a service mark, the court may order the infringing party to immediately cease the provision of the infringing services. The custody of infringing materials is an important remedy in trademark infringement cases as it helps to prevent further infringement and protect the interests of the trademark owner

  1. Criminal Remedies
  2. Imprisonment

Under Section 103, any person who infringes a registered trademark is liable for criminal prosecution and imprisonment for a term not less than six months and which may extend up to three years, along with a fine.

  • Penalty

Under Section 104, if a person falsely applies for a registered trademark or makes or disposes of any instrument for falsifying a registered trademark, to deceive or cause damage to another person, then they will be punished with imprisonment for a term not less than six months which may extend to three years, along with a fine.

  • Administrative Remedies

Administrative remedies are a set of legal procedures that trademark owners can use to protect their trademark rights without having to go to court. These remedies include the following:

Opposition: Any person can file an opposition to the registration of a trademark application within a specified period after the application is advertised. The opposition can be filed on various grounds, such as prior use of the mark, the likelihood of confusion, and lack of distinctiveness.

Rectification: A trademark owner can apply for rectification of the register if the mark has been registered in violation of the provisions of the Trademarks Act. This includes situations where the mark has been registered fraudulently or where the registration was obtained by misrepresentation or suppression of material facts.

Landmark Cases On Trademark Infringement

Here are some of the landmark cases of Infrignment of Trademark are as follows:

Yahoo! Inc. v. Akash Arora & Anr                 

This case is among one the most famous cases of trademark infringement. 


Yahoo Inc. (Plaintiff) was the rightful owner of the trademark ‘Yahoo’ and the domain name’ These trademarks were widely recognized by people across the globe. 

Akash Arora & Anr (Defendant) were found to be providing similar internet related under the domain name '', the domain name was similar to that of Plaintiff's domain name which can further create confusion in the minds of the public at large.

Therefore, Plaintiff sought an interim injunction to stop the defendant from infringing the trademark of the plaintiff. The case was filed in the Delhi High Court in India in 2004. 


The Delhi High Court ruled in favor of Yahoo! Inc. and held that Defendant’s use of the term "Yahoo" in their domain name was indeed an infringement of Yahoo! Inc.'s trademark. The court also ordered Defendants to pay damages to Plaintiff for the infringement.


This case was the landmark case on 'cybersquatting.' This case resolved the issue of whether a domain name can be the same protection as a trademark. The Delhi High Court's ruling, in this case, established an essential precedent in Indian intellectual property law. Further, the case resolved the crucial issue in Indian trademark law regarding passing-off. Moreover, the case delved into the legal application of Sections 29 and 27 of the Trade and Merchandise Marks Act.

Mondelez India Foods Private Limited (formerly Cadbury India Ltd.) V. Neeraj Food products


Mondelez India Foods (Plaintiff) accused Neeraj Food Products (Defendant) of infringing on its trademark and passing off its products as those of Mondelez India Foods.

The plaintiff alleged that the defendant was selling the chocolate with the name 'JAMES BOND', which was deceptively similar to the plaintiff's registered copyright 'GEMS BOND' which was used for advertising campaigns. The plaintiffs further alleged that by using such marks the defendants are taking benefit of the goodwill of the plaintiff.


The court ruled in favor of Mondelez India Foods, stating that Neeraj Food Products had indeed infringed on the trademark of Mondelez India Foods and engaged in passing it off. The court further ordered the defendant to stop using the name ‘JAMES BOND’ and, ordered them to change the packaging of the product.

The court not only granted the Plaintiff's request for a permanent and mandatory injunction but also awarded them damages totaling Rs. 10 lakhs.


The court's decision reinforces the legal principle that passing off and trademark infringement are serious offenses that can harm the reputation of established brands. The ruling in favor of Mondelez India Foods demonstrates the need for businesses to be vigilant in protecting their intellectual property and to take legal action when necessary.

Cadila Healthcare Ltd. v. Cadila Pharmaceuticals


Cadila Healthcare Ltd. (Appellant) and Cadila Pharmaceuticals (Respondent) are both pharmaceutical companies and were engaged in the sale of medical products. Both companies have the right to use the word ‘Cadila’. The Appellant company was authorized by the Drugs Controller of India in 1996 to sell a drug under the brand name 'Falcigo', which was originally intended to treat cerebral malaria. In 1997, the Respondent was also granted permission to sell a drug for cerebral malaria under the name 'Falcitab'.

The appellant sought an injunction prohibiting the respondent from using the ‘Falcitab’ as it was deceptively similar to its registered word ‘Falcigo', the appellant further contended that it will create confusion in the minds of the public at large as this drug is used for the same treatment.


The Supreme Court considered multiple factors, such as the readability of doctors' prescriptions, the potential for accidental confusion resulting from deceptive similarity, and the need for caution in cases where drugs used to treat the same disease have different compositions.

The  Supreme Court held that there is a likelihood of passing off as it will create confusion in the minds of the public.

The Supreme Court established certain principles that should be considered when determining whether a mark is deceptively like another mark. These principles include examining the nature of the marks, which could be word marks or composite marks, as well as their ideological and phonetic similarity. The Court also emphasized the importance of assessing the similarity of the nature, performance, and character of the applicants and identifying the class of consumers who are likely to purchase the products associated with the marks. These principles help ensure that trademark disputes are evaluated using a thorough and fair process that considers all relevant factors.



The case highlights the importance of protecting trademarks and preventing passing off and trademark infringement in India. The Supreme Court's decision, in this case, established important principles to be considered when determining whether a mark is deceptively similar to another mark, including assessing the nature of the marks, ideological and phonetic similarity, the similarity of the applicants, and the class of consumers.