You’ve built a brand over years. Then a search on the trademark registry, or a customer’s confused message, shows that someone else has registered a name or logo close to yours. Sometimes in the same class of goods.
It feels like they now own your brand. They don’t, at least not yet. Indian law gives earlier users several ways to fight back, and the right one depends on how far the other mark has travelled through the registry. This guide walks through each route for trademark infringement action in India, from opposition and rectification to a passing off suit, and what you need to prove at each step.
Step one: Find out Where the Other Mark Stands
Run a search on the IP India public search portal and note three things: the application number, its status, and the class it covers. Your options change with the status.
| Status of their mark | Your main route |
|---|---|
| Applied, not yet advertised | Watch the Trade Marks Journal; file your own application if you haven’t |
| Advertised in the Trade Marks Journal | Opposition under Section 21 |
| Registered | Rectification under Sections 47 and 57, plus a passing off suit |
| Not applied, only in use | Infringement suit if your mark is registered; passing off if it isn’t |
If Their Mark is Still an Application: Oppose it
Every accepted application is published in the Trade Marks Journal. Under Section 21 of the Trade Marks Act, 1999, anyone can oppose it within four months of publication. The deadline is strict, which is why brand owners watch the Journal every week.
The opposition is filed on Form TM-O before the Registrar. Common grounds include deceptive similarity to your earlier mark (Section 11), bad faith, and lack of distinctiveness. The applicant then files a counter-statement, both sides file evidence, and the Registrar hears the matter.
If Their Mark is Already Registered: Apply for Rectification
A registration isn’t final. Under Section 57, any “person aggrieved” can ask for a mark to be cancelled or the register corrected. Grounds usually include:
- The mark was registered despite an earlier, similar mark that was already in use
- The application was filed in bad faith, for example by a former distributor or employee
- The mark is likely to deceive or confuse the public
Section 47 adds a separate ground: if the owner hasn’t used the mark for a continuous period of five years and three months, it can be removed for non-use.
Since the Intellectual Property Appellate Board was abolished in 2021, rectification petitions go to the Registrar or to the High Court. The Delhi High Court’s IP Division now hears a large share of them.
Can you sue a Registered Owner for Infringement?
This is where many brand owners get stuck. Section 28(3) says that where two parties hold registrations for similar marks, neither gets an exclusive right against the other. Section 30(2)(e) adds that using your own registered mark is not infringement.
In Abros Sports International v. Ashish Bansal (2025), a Division Bench of the Delhi High Court held that an infringement claim can’t be brought against a registered proprietor, and referred related questions to a larger bench. Until that is settled, an infringement suit against a registered owner is uncertain. Under Section 124, a court will usually also pause such a suit while the rectification is decided.
Passing off is the stronger route here. Section 27(2) keeps it alive regardless of registration. In S. Syed Mohideen v. P. Sulochana Bai (2016), the Supreme Court held that a prior user’s passing off rights survive a later registration by someone else. Section 34 protects the same position from the other side: a registered owner can’t stop a person who was using the mark first.
Steps to Stop a Similar Trademark
- Collect proof of prior use. Dated invoices, advertisements, packaging, website and domain records, social media posts, sales figures and press coverage. The earliest date you can prove often decides the case.
- Send a cease and desist notice. Set out your rights, the confusion caused, and a deadline. Many copycats withdraw or rebrand at this stage.
- File opposition or rectification, depending on the status of their mark.
- File a civil suit for passing off, and infringement where it is available, with an application for an interim injunction. Commercial suits normally need pre-institution mediation under Section 12A of the Commercial Courts Act, 2015, but a suit seeking urgent interim relief is exempt. A court can order an injunction, damages or an account of profits, and delivery up of infringing goods.
- Consider a criminal complaint for counterfeit or falsely marked goods. Sections 103 and 104 carry imprisonment of six months to three years and a fine of ₹50,000 to ₹2 lakh.
- Clean up online use. File takedown requests with marketplaces and, for a copycat domain, a complaint under INDRP (for .in) or UDRP (for .com).
Don’t Wait too Long
Delay hurts in two ways. A court is less willing to grant an interim injunction if you knew about the copycat for months and did nothing. And under Section 33, if you knowingly let a registered mark be used for five continuous years, you lose the right to challenge it.
How Trademark Registration Protects you Next Time
Most of these disputes start because the earlier user never filed. Trademark registration in every class you trade in, or plan to, gives you the statutory right to sue for infringement and makes opposition and rectification easier. Pair it with a monthly watch on the Trade Marks Journal so you catch similar applications before they mature.
When to Bring in a Trademark Law Firm
An opposition can be filed without a lawyer, but most copycat disputes turn on evidence and timing. A trademark law firm can run the clearance search, assess whether infringement or passing off is the better claim, draft the notice and file rectification and suit together so neither waits on the other.
If someone has registered a mark close to yours, [Firm Name]’s trademark lawyers can review the registration, map your options and act before deadlines run out. Book a consultation to discuss your brand.
Conclusion
A similar registration doesn’t end your claim to your brand. Check the status of their mark, gather proof that you were first, and pick the route that fits: opposition, rectification, passing off, or all three together. The sooner you start trademark infringement action in India, the stronger your position. If the stakes are high, speak with a trademark law firm before you send the first notice.
