INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
carefully structured clauses such as clauses pertain - ing to quality control, indemnity and termination help safeguard the interests of all parties involved. 6.3 Registration or Recording of an Assignment or Licence In India, while assignments and licences are valid even without registration, it is strongly recommended to register them. Registration helps minimise risks such as disputes over priority, unenforceability, or conflicts with later recorded assignments or licences. It ensures legal certainty, provides clarity, and establishes prior - ity over subsequent claims. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits The Limitation Act 1963 sets out the statute of limita - tions for filing infringement actions. In most civil cas - es, the statute of limitations runs for three years from the date of the first breach of rights. An infringement proceeding, on the other hand, necessitates the use of a deceptively similar mark by the defendant. Because each instance of usage of such a mark gives rise to a new cause of action, the three-year limit does not apply in such cases ( Timken Company v Timken Ser- vices Private Ltd , 2004 (28) PTC 121 SC). 7.2 Legal Claims for Infringement Lawsuits and Their Standards Based on the level of infringement, various strategies could be devised on a case-by-case basis, which could include obtaining and executing legal proceed - ings, serving the opposite party with cease-and-desist notices, and/or initiating pre-litigation mediation pro - ceedings. The trade mark owner can pursue infringement actions or passing off in the competent court for civil relief such as: • an interlocutory, temporary or ad interim injunction; • a permanent or perpetual injunction; • a Mareva injunction (freezing injunction); • an Anton Piller order;
• a John Doe order; • damages or accounts of profits; and • delivery up and destruction. Criminal and administrative reliefs are also available under the Trade Marks Act 1999. Section 29 of the Trade Marks Act 1999 provides an exhaustive list of situations in which a registered mark can be infringed. Similarly, unregistered trade marks are protected as part of India’s common law regime. An action for passing off can always be instituted against the misuse of an unregistered trade mark. Section 27 of the Trade Marks Act 1999 specifically reinforces this common law remedy by stating that the right to invoke a claim for passing off remains undis - turbed by the statute. 7.3 Factors in Determining Infringement Section 29 of the Trade Marks Act 1999 gives a com - prehensive list of scenarios in which a trade mark can be violated. One of the essential requirements for infringement is that the infringing mark is used in the course of business by a third party. Further tests for infringement include the following: • use of an identical or deceptively similar mark on goods or services that are the same as those covered by the scope of the former trade mark’s registration; • use of an identical or similar mark on goods and services that are identical or similar to the goods or services associated with the registered trade mark, in a way that is likely to confuse the public into thinking that the original mark and the offending mark are associated with one another; • use of a mark, even in relation to goods or services which are not covered in the scope of the registra - tion, provided that the registered trade mark has a reputation in India – the reputation also must be such that misuse by the third party denigrates the distinctiveness of the mark; and • use of mark, or a part of the mark, as part of the corporate name or trading name of an entity.
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