The firm's IP litigation practice is centred on trade mark and copyright matters — infringement and passing-off suits, opposition and rectification proceedings, domain name disputes, and enforcement against counterfeiters and parallel importers. Matters are conducted before Commercial Courts under the Commercial Courts Act, 2015, the Intellectual Property Divisions of the High Courts, and the Supreme Court of India.
The litigation practice is integrated with the prosecution practice. Specifications, examination replies, and opposition pleadings are drafted from the outset on the assumption that the resulting registration may be asserted in contested proceedings.
Infringement and passing-off suits in respect of registered trade marks are filed under Section 134 of the Trade Marks Act, 1999, which permits the proprietor to sue in the District Court within whose jurisdiction the proprietor or one of the joint proprietors actually and voluntarily resides or carries on business. The Commercial Courts Act, 2015 confers jurisdiction over commercial disputes — including IP disputes — on the Commercial Division of the High Court where the value of the suit exceeds the specified pecuniary threshold, and on Commercial Courts at the District level where it does not.
Opposition and rectification proceedings are filed before the Trade Marks Registry under Sections 21 and 57 respectively, and before the Intellectual Property Division of the relevant High Court in respect of rectification under Section 57(2). Following the Tribunals Reforms Act, 2021 and the abolition of the Intellectual Property Appellate Board, the IPDs of the Delhi, Madras, Bombay, Ahmedabad, and Calcutta High Courts have assumed jurisdiction over IP appeals and rectification matters formerly heard by the IPAB.
Copyright infringement is actionable under Section 55 of the Copyright Act, 1957. Civil suits for infringement are filed before the Commercial Court at the District level or the Commercial Division of the High Court, depending on pecuniary value. Criminal proceedings under Section 63 are initiated by way of complaint before the Magistrate having jurisdiction.
Domain name disputes involving .in domains are addressed under the .IN Domain Name Dispute Resolution Policy (INDRP) administered by NIXI. Disputes involving generic top-level domains are addressed under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) administered by ICANN-accredited providers including WIPO. Both policies operate independently of court proceedings, and a parallel suit for passing-off or infringement may be maintained.
Suits under Section 29 of the Trade Marks Act, 1999 for unauthorised use of a registered mark in the course of trade, including identical and similar mark cases, and use in respect of identical and similar goods.
Common-law actions for passing-off in respect of unregistered marks, well-known marks, and trade dress, founded on goodwill, misrepresentation, and damage in accordance with the Reckitt & Colman v Borden trinity.
Notices of Opposition, Counter-Statements, evidence affidavits, and hearings before the Trade Marks Registry under Sections 21 to 23 of the Act.
Petitions under Sections 47 and 57 of the Trade Marks Act, 1999 for cancellation or variation of registered marks on grounds of non-use, contravention of the Act, or registration obtained by fraud or misrepresentation.
Civil and criminal proceedings under Sections 55 and 63 of the Copyright Act, 1957 in respect of literary, artistic, musical, cinematographic, and digital works.
Proceedings under the INDRP for .in domains and the UDRP for generic top-level domains, alongside parallel suits for passing-off where appropriate.
Interim injunctions in IP infringement matters are governed by the principles in Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, applied through the lens of the American Cyanamid and Gujarat Bottling line of authority. The court considers the existence of a prima facie case, the balance of convenience, and the question of irreparable injury. Ex parte ad-interim injunctions are granted in appropriate cases on the principles in Morgan Stanley Mutual Fund v Kartick Das.
John Doe orders, also termed Ashok Kumar orders, are granted against unknown defendants in cases of widespread infringement — particularly counterfeiting and online piracy — where the identities of the infringers cannot be ascertained at the institution of the suit. The order operates against persons coming within the description of the John Doe class.
Anton Piller orders, providing for search and inspection of the defendant's premises and the preservation of evidence, are granted in exceptional cases where there is a real risk that the defendant will destroy or conceal infringing material. The standard for grant is exacting and follows the principles laid down in Anton Piller KG v Manufacturing Processes Ltd.
Dynamic injunctions, addressing the migration of infringing content across mirror websites and rogue domains, have been recognised in Indian jurisprudence in UTV Software v 1337X.to and subsequent decisions. The injunction extends to mirror sites and successor domains identified after the institution of the suit, on application to the court.
The strength of the underlying registration is the first consideration. A mark obtained on a thin specification, with a weak user claim or with concessions in the examination reply, is exposed to counterclaim for rectification under Section 57. Litigation founded on a vulnerable registration is liable to result in the loss of the registration itself, in addition to dismissal of the suit.
Choice of forum and choice of relief shape the conduct of the proceedings. Suits under Section 134 in the District Court differ in pace and approach from suits in the Commercial Division of the High Court. The relief sought — injunction, damages, account of profits, delivery-up, costs — affects the evidence required and the procedural calendar. Strategic decisions on forum and relief are made before the plaint is drafted, not after.
Interim relief is, in most matters, the substantive relief. The grant or refusal of an interim injunction frequently determines the commercial trajectory of the dispute. Pleadings, supporting affidavits, and documents at the interim stage must be prepared to the standard of final hearing, not as a procedural step.
Settlement is a constant consideration, not a fallback. Coexistence agreements, undertakings, and consent orders may achieve outcomes that contested proceedings cannot — particularly in matters involving long-standing parallel use, related parties, or marks with overlapping but non-identical scope. Settlement terms must be drafted to withstand future contest with the same rigour as litigation pleadings.
For an initial discussion of a contested trade mark or copyright matter, the firm's Ahmedabad office may be reached by email or telephone. Written engagement is preferred for litigation matters.