FILING A TRADEMARK INFRINGEMENT LAWSUIT IN INDIA

 Abstract and Introduction

The Fast-Moving Consumer Goods (FMCG) sector is one of the most litigated areas in Indian trademark law. This is mainly because the value of an FMCG brand comes not just from its name, but from the overall look of its packaging. This includes the colours, the arrangement of the graphics, the shape of the container, and the placement of the text. Together, these features constitute the brand’s “trade dress” or “get-up.” A common issue in this sector is when companies create “look-alike” products. These are competing goods that closely copy the overall packaging of a well-known brand, which can confuse shoppers, especially those in a hurry. Often, these copies include small differences to argue that they are not the same.

This article offers a clear guide to filing a trademark infringement suit in India for packaging imitation, focusing on Section 29 (infringement of registered trademarks) and Section 134 (institution of suit and jurisdiction) of the Trade Marks Act, 1999. The discussion covers four main areas: an overview of the laws and courts involved, a step-by-step process for filing and handling a case, a review of court decisions on similar packaging, and an analysis of gaps in Indian trade dress law. The article ends with practical advice for FMCG brand owners and their legal teams.

 Background and Legal Framework

The Statutory Concept of a “Mark” and Trade Dress

Section 2(1)(zb) of the Act defines a “trademark” expansively enough to include the shape of goods, their packaging, and combinations of colours, provided the mark is capable of distinguishing the goods of one undertaking from those of another and can be represented graphically. Section 2(1)(m) similarly defines “mark” to include, among other things, a package. Read together, these provisions permit an FMCG manufacturer to seek registration not only of its brand name and logo, but of its distinctive packaging get-up as a composite trademark. Where such composite or device marks (or the underlying colour combination and layout) are registered, an imitation of the packaging squarely attracts the infringement provisions of Section 29. Where the packaging is unregistered, the proprietor must instead rely on the common-law action of passing off, which Section 27(2) of the Act expressly preserves, notwithstanding the statutory infringement regime.

Section 29 — What Constitutes Infringement

Under Section 29, there are several distinct, though overlapping, statutory provisions that provide grounds of infringement.

• Section 29(1) applies if: ‘a person who is not the registered proprietor [of a mark], nor a permitted user thereof, shall use in the course of trade a mark identical with, or deceptively similar to, a registered trademark in respect of the goods for which it is registered.’
• Section 29(2): ‘Where a mark identical with or similar to a registered trademark is used on goods identical with, or similar to those for which the latter has been registered, and where such use would be likely to cause confusion amongst the public by reason of such identity or similarity, or would be likely to indicate an association between the two marks, then, subject to subsections (3) and (5), the person using the said mark shall be deemed to have infringed the registered trademark’. This section forms the basis of most cases involving “lookalikes” in the fast-moving consumer goods sector. Case law suggests that this dispute tends to arise when a product is marketed within the same product category as the registered mark (e.g., biscuits & confectionery; soaps and detergents, etc.).
• Under s. 29 (3), the law provides for a statutory presumption that there is a ‘likelihood of confusion’ if the impugned mark is the same as the one claimed by the plaintiff, being used for the sale of the same goods, thereby making the case of the plaintiff less burdensome from the evidence front. Section 29 (4), however, makes provision that the provisions of this section shall also apply with respect to a well-known and reputed trade mark, irrespective of whether the impugned mark is used on dissimilar goods. In such cases, the user is using the impugned mark without due cause and is taking unfair advantage or damaging the distinctive character or reputation of the registered trade mark.
• Finally, under s. 29(7), it shall be deemed to be infringement if the registered trade mark is applied to packaging or labelling material to be used for packaging goods other than those put on the market by the proprietor. This provision applies when infringing packing/wrapping materials have been manufactured/supplied.
• The effect of s. 29(9) is to clarify that in circumstances where the trade mark consists of both word and visual elements, infringement can be established by reference to the spoken utterance of its word component(s). This will have particular resonance in those cases where there has been a look-alike using a phonetically similar brand name.
• By contrast, the primary cause of action for ‘packaging simulation’ arises out of s. 29(2) read with s. 29(3). It is based upon the claim that the overall visual impression created by the defendant’s packaging is deceptively similar to that created by the Plaintiff’s, and is therefore being applied to the sale of the same or closely allied category of goods.

Section 134 — Jurisdiction and Institution of Suit

Section 134(1) confers exclusive jurisdiction upon such a district court [or, in chartered high courts and courts designated as commercial courts under the Commercial Courts Act, 2015, the respective high courts exercising ordinary original civil jurisdictions] that has jurisdiction over the matter, to hear and determine suits relating to infringement. The major procedural innovation introduced through this bill relates to the location in which the plaintiff chooses to file the suit against the infringer – section 134(2) empowers him/her to do so within the local limits of the court where the plaintiff himself/herself resides, or carries on his/her business or personally works for gain irrespective of where the cause of action took place or whether the defendant resides therein. Such a provision marks a substantial relaxation of the traditional forum requirements of section 20 of the Code of Civil Procedure, 1908. A national FMCG brand owner will find such flexibility strategically beneficial, as they can institute proceedings from their main point of business rather than being required to pursue an aggressor in a distant and possibly inconvenient venue.

In terms of relief, s 135 provides for an injunction (interim/permanent) along with, at the option of the plaintiff, damages or accounts of profits in addition to an order to deliver up the infringing label(s)/packaging materials for destruction/erasure. S 135 (2) & (3) also authorises ex-parties interim injunctive relief as well as ‘Anton Piller’ type orders appointing a local commissioner for purposes of searching and seizure of infringing stock -a much sought-after remedy especially relevant to those engaged in the rapidly proliferating FMCG sector.

Procedural Roadmap for Filing the Suit

• Cease-and-Desist Notice: Counsel typically issues a cease-and-desist notice calling upon the infringer to withdraw the impugned packaging from the market within a stipulated period. While not a mandatory precondition to filing suit, a notice builds a documentary record of the defendant’s knowledge and any admission or evasive response, and may be dispensed with where urgency justifies an immediate ex parte application.
• Evidence Gathering: Since the gravamen of the claim is deceptive similarity of visual impression, the plaintiff must compile comparative photographic evidence of the two packages side by side and, more importantly, evidence of how an average consumer with imperfect recollection would perceive them separately in a retail setting. Test purchases (through an investigator or a local commissioner appointed by the court), invoices evidencing the defendant’s sale, and, where feasible, market or consumer-confusion surveys strengthen the evidentiary foundation.
• Determining Jurisdiction: Counsel must identify the appropriate forum under Section 134(2), generally the Commercial Court or Commercial Division of the High Court within whose limits the plaintiff resides or carries on business, keeping in mind pecuniary jurisdiction thresholds under the Commercial Courts Act, 2015.
• Drafting the Plaint: The plaint must set out the plaintiff’s proprietary rights (registration particulars and/or long, continuous, and prior use establishing goodwill), a detailed comparison of the marks and packaging get-up, particulars of the defendant’s infringing conduct, and the reliefs claimed under Section 135. Where registration is relied upon, the certificate of registration and renewal status must be pleaded and annexed; where passing off is also pleaded in the alternative, particulars of goodwill, misrepresentation, and likely damage must be separately made out, since passing off and statutory infringement remain distinct causes of action with different elements, as clarified by the Supreme Court.
• Interim Injunction Application: An application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 typically accompanies the plaint, seeking an ad-interim and, thereafter, a temporary injunction restraining further manufacture, sale, or advertisement of the impugned packaging pending trial. Indian courts assess such applications on the settled tripartite test: a prima facie case, balance of convenience in the plaintiff’s favour, and irreparable injury if the injunction is withheld. Given the speed at which infringing FMCG stock can saturate the market, courts frequently grant ex parte ad interim relief, followed by a local commissioner’s inspection to seize infringing packaging and account for stock.
• Written Statement and Trial: Upon service, the defendant files a written statement, commonly raising defences under Section 30 (such as honest and bona fide use of a common descriptive element, or use for indicating the kind, quality, or characteristics of the goods) or challenging the validity or distinctiveness of the plaintiff’s registration. Issues are framed, and the parties lead evidence — factual witnesses on adoption and use, and, where relevant, market survey or consumer-perception evidence — followed by cross-examination and final arguments.
• Final Decree: On success, the court grants a permanent injunction, and, at the plaintiff’s election, either damages (compensatory, and increasingly punitive in cases of flagrant and repeated infringement) or an account of the infringer’s profits, together with a direction for delivery-up and destruction of the infringing packaging material under Section 135.

Main Analysis and Case Studies

The Test for Deceptive Similarity of Packaging

Indian courts have consistently held that deceptive similarity is to be assessed not through a meticulous, side-by-side comparison of the competing packages, but through the lens of a consumer of average intelligence and imperfect recollection, who is unlikely to have both packages before him at the same time. In Parle Products (P) Ltd. v. J.P. and Co., Mysore, the Supreme Court, comparing the wrapper of “Parle’s Gluco Biscuits” with that of the respondent’s “Gluvita” biscuits, held that the two packets, though not identical in every particular, produced an overall impression of similarity when viewed as a whole, and that it was this overall impression — rather than a dissection of individual differences — that governed the question of deceptive similarity.

In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the Supreme Court laid down a set of factors relevant to assessing deceptive similarity, including the nature of the marks (word, label, or composite), the degree of visual, phonetic, or structural resemblance, the nature of the goods, the class of purchasers likely to buy the goods (having regard to their education, intelligence, and the degree of care they are likely to exercise), the mode of purchasing the goods, and any other surrounding circumstances. Although Cadila arose in the pharmaceutical context, its multi-factor test is routinely applied by Indian courts to FMCG packaging disputes, with the “mode of purchase” factor assuming particular significance: FMCG products are typically low-value, high-frequency, self-selected purchases made quickly off a crowded retail shelf, a context in which courts have recognised that consumers exercise comparatively less care and are correspondingly more susceptible to confusion from a similar overall get-up.

Trade Dress and Colour Combination as Source Identifiers

In Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd., the Delhi High Court recognised that a particular combination of colours, layout, and the manner of presentation of a product (in that instance, the red-and-white colour scheme associated with the plaintiff’s toothpowder and toothpaste cartons) can itself function as a trade dress capable of protection, distinct from any word mark appearing on the packaging. The court reasoned that where a competitor adopts a strikingly similar colour combination and packaging arrangement, a consumer’s overall recollection of that get-up — rather than the specific brand name — may be what leads to confusion or association at the point of sale, particularly for semi-literate or hurried consumers.

 Application to FMCG Confectionery and Snack Packaging

The Delhi High Court’s decision in Cadbury India Ltd. v. Neeraj Food Products is instructive on the specific problem of confectionery packaging simulation. The defendant’s “James Bond” candy was sold in a wrapper whose colour scheme, layout of the purple and brown panels, and overall visual arrangement closely echoed the plaintiff’s well-known “Cadbury Gems” packaging, notwithstanding the absence of any similarity between the word marks “Gems” and “James Bond.” The court granted an injunction restraining the defendant’s packaging, holding that where the essential features and overall impression of a wrapper are imitated, the mere adoption of a different brand name upon the package does not absolve the imitator, since an unwary consumer purchasing on the strength of a remembered visual impression, rather than a remembered word, may still be misled or led to assume a trade connection.

A comparable pattern recurs in disputes between major Indian biscuit manufacturers over the trade dress of premium and health-oriented biscuit lines, where Delhi courts have on more than one occasion been called upon to restrain a competitor’s packaging on the ground that its colour scheme and panel layout too closely echoed an established rival’s get-up for a distinct product sub-category. These disputes illustrate that in the FMCG space, litigation increasingly centres on the packaging as a whole — background colour, the placement of the product image, the typographical treatment of descriptive words such as “digestive” or “healthy” — rather than on the registered word mark alone, reflecting the commercial reality that shelf recognition in this sector is overwhelmingly visual.

The Statutory-versus-Common-Law Distinction

In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, the Supreme Court clarified the doctrinal distinction between an infringement action, which is a creature of statute and is made out upon proof of deceptive similarity between the marks themselves without the need to independently prove actual deception or damage once the statutory conditions are satisfied, and a passing-off action, which requires proof of misrepresentation, damage, and goodwill in the classic sense. This distinction remains material to the pleading strategy in FMCG packaging disputes: where the packaging elements themselves are registered as a composite mark, the plaintiff’s task under Section 29 is comparatively lighter; where they are not, the plaintiff must additionally establish the elements of passing off, including that the get-up has, through prior and continuous use, come to be distinctively associated with the plaintiff’s goods in the mind of the trade and public.

Critical Analysis and Evaluation

The Absence of a Codified Trade Dress Doctrine

A significant gap in the Indian statutory framework is the absence of any express, freestanding definition of “trade dress” comparable to the developed jurisprudence under trade dress provisions in other common law jurisdictions. Indian courts have instead had to construct trade dress protection indirectly — through the inclusive definitions in Section 2(1)(zb) and 2(1)(m), through the general infringement test in Section 29(2), and, where registration is absent, through the common law of passing off. This indirect route creates doctrinal uncertainty as to precisely which packaging elements (colour, shape, layout, typography) are protectable as of right, and which are functional or customary to the trade and therefore incapable of monopolisation — a distinction of real consequence in the FMCG sector, where certain colours (for instance, green for a mint-flavoured product, or blue for a menthol variant) are widely understood by the trade to denote a flavour or characteristic rather than a particular manufacturer, and are accordingly available as a defence under Section 30(2)(a) for bona fide descriptive use.

 The Evidentiary Gap on Consumer Confusion

A further limitation lies in the comparatively limited role that empirical consumer-confusion surveys play in Indian trademark litigation. While courts frequently invoke the standard of the consumer of “average intelligence and imperfect recollection,” this standard is typically applied through judicial impression rather than through structured survey evidence of actual market confusion, a methodology that is far more developed in several foreign jurisdictions. Reliance on judicial impression alone, however carefully reasoned, risks a degree of subjectivity and unpredictability in outcome, particularly at the interim injunction stage where the matter is decided on affidavit evidence and without the benefit of a full trial. There is a reasoned case for Indian courts and litigants to place greater reliance on properly conducted, methodologically sound consumer surveys in trade dress disputes, to anchor the finding of deceptive similarity in demonstrable market perception rather than in judicial assumption.

Delay and the Case for Commercial Courts

The establishment of dedicated Commercial Courts and Commercial Divisions under the Commercial Courts Act, 2015 has meaningfully improved the pace of disposal of high-value IP suits, including FMCG packaging disputes, through case-management hearings, summary judgment procedures, and stricter timelines for filing of written statements and evidence. Nonetheless, given the perishable commercial value of a shelf-life advantage in the FMCG sector — where an infringing look-alike can capture significant market share within a single festive or promotional season — there remains a strong case for the continued and consistent use of ex-parte ad-interim relief, coupled with expedited local commissioner inspections, as the primary practical safeguard for brand owners pending final adjudication.

Recommendations

• FMCG brand owners should proactively register not merely their word marks and logos but their packaging get-up as composite or device marks, to secure the more favourable evidentiary footing available under Section 29 rather than relying solely on passing off.
• Brand owners should maintain a documented record of continuous packaging use (dated artwork, invoices, advertising material) from the date of first adoption, which is indispensable both to a passing-off claim and to rebutting any challenge to the validity of a registered composite mark.
• Litigants should consider commissioning professionally conducted consumer-perception surveys at an early stage, particularly in borderline cases, to strengthen the evidentiary basis for interim relief.
• Given the strategic advantage conferred by Section 134(2), suits should ordinarily be instituted at the plaintiff’s principal place of business unless case-specific considerations (such as the location of infringing stock or the convenience of witnesses) suggest otherwise.

Conclusion

The Trade Marks Act, 1999, when read as a coherent whole — the expansive definitions in Section 2, the multiple infringement grounds in Section 29, the plaintiff-friendly forum provision in Section 134, and the range of reliefs under Section 135 — furnishes Indian FMCG brand owners with a reasonably robust statutory architecture to combat packaging look-alikes. Judicial interpretation, from Parle Products through Cadila Health Care to Colgate Palmolive and Cadbury India v. Neeraj Food Products, has consistently anchored the inquiry in the overall impression left upon a consumer of ordinary intelligence and imperfect recollection, rather than in a forensic dissection of individual similarities and differences — an approach well suited to the shelf-based, split-second purchasing behaviour characteristic of the sector. That said, the absence of a codified trade dress doctrine and the limited use of empirical confusion evidence remain areas warranting reform. For practitioners and brand owners alike, the most reliable strategy remains a combination of proactive registration of packaging as a composite mark, meticulous documentary evidence of prior use, and prompt recourse to the interim injunction machinery under Section 134 and Order XXXIX of the Code of Civil Procedure, to arrest the commercial harm of a look-alike product before it becomes entrenched in the market.

References and Citations

Statutes

Trade Marks Act, 1999 (Act No. 47 of 1999), Sections 2(1)(m), 2(1)(zb), 27, 28, 29, 30, 134, and 135.

Code of Civil Procedure, 1908, Section 20 and Order XXXIX, Rules 1 and 2.

Commercial Courts Act, 2015.

Case Laws

Parle Products (P) Ltd. v. J.P. and Co., Mysore, AIR 1972 SC 1359.

Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980.

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73.

Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd., 2003 (27) PTC 478 (Del).

Cadbury India Ltd. v. Neeraj Food Products, 2007 (35) PTC 95 (Del).

Frequently Asked Questions (FAQs)

Q1. Is the “look” of a product’s packaging actually protectable as a trademark under Indian law, or only the brand name and logo?

Yes. Section 2(1) (zb) defines a “trademark” expansively enough to include the shape of goods, their packaging, and combinations of colours, and Section 2(1)(m) defines “mark” to include a package. Read together, these provisions permit an FMCG manufacturer to register not just its brand name and logo, but its distinctive packaging get-up as a composite trademark, as discussed in Part II. A above. That said, India has no codified, freestanding “trade dress” doctrine of the kind seen in some other common-law jurisdictions — courts construct this protection indirectly, through these definitions, through Section 29(2), and through the common law of passing off, as noted in Part IV.A.

Q2. My client’s packaging is not registered as a composite mark. Can we still stop a competitor from copying it?

Yes, but the burden is heavier. Section 27(2) expressly preserves the common-law action of passing off notwithstanding the statutory infringement regime. As the Supreme Court clarified in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, an infringement action under Section 29 requires only proof of deceptive similarity once the statutory conditions are met. In contrast, a passing-off action additionally requires proof of misrepresentation, damage, and goodwill in the classic sense — meaning the proprietor must show that the get-up has, through prior and continuous use, come to be distinctively associated with its goods in the mind of the trade and public (Part III.D). This is precisely why Part IV.D of this article recommends that brand owners register their packaging get-up as a composite or device mark wherever possible, rather than relying solely on passing off.

Q3. Which specific limb of Section 29 do we actually plead in a packaging look-alike case?

In most FMCG packaging disputes, the primary cause of action arises under Section 29(2) read with Section 29(3) — the claim that the overall visual impression created by the defendant’s packaging is deceptively similar to the plaintiff’s, applied to the same or a closely allied category of goods (Part II.B). Section 29(3) is particularly useful evidentially, as it creates a statutory presumption of a “likelihood of confusion” where the impugned mark and the goods are the same as the plaintiff’s, which lightens the plaintiff’s evidentiary burden. Where the packaging is used on dissimilar goods, but the plaintiff’s mark is well known, Section 29(4) may also be relevant, and Section 29(7) is separately available where infringing packaging or labelling material itself is manufactured or supplied.

Q4. The defendant has put a completely different brand name on their packaging — doesn’t that resolve the confusion?

Not necessarily. In Cadbury India Ltd. v. Neeraj Food Products, the defendant’s “James Bond” candy wrapper closely echoed the colour scheme, panel layout, and overall visual arrangement of the plaintiff’s well-known “Cadbury Gems” packaging, notwithstanding the total absence of similarity between the word marks “Gems” and “James Bond.” The Delhi High Court granted an injunction, holding that where the essential features and overall impression of a wrapper are imitated, adopting a different brand name on the package does not absolve the imitator — an unwary consumer purchasing on the strength of a remembered visual impression, rather than a remembered word, may still be misled (Part III.C).

Q5. How exactly will a court compare our client’s packaging with the defendant’s?

Not through a meticulous, side-by-side comparison. Indian courts assess deceptive similarity through the lens of a consumer of average intelligence and imperfect recollection, who is unlikely to have both packages before him at the same time — a principle established in Parle Products (P) Ltd. v. J.P. and Co., Mysore, where the Supreme Court held that the overall impression, rather than a dissection of individual differences, governs the inquiry (Part III.A). The Supreme Court’s decision in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. supplies the operative checklist: the nature of the marks, the degree of visual, phonetic, or structural resemblance, the nature of the goods, the class of purchasers and the care they are likely to exercise, the mode of purchase, and any other surrounding circumstances.