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A brand owner in India can take several legal and practical steps to prevent counterfeit products from being manufactured, sold, imported or distributed using their brand name, logo, trademark or other intellectual property without authorization.
1. Register the Brand and Logo as Trademarks
If the brand name or logo is registered as a trademark, the proprietor receives legal protection for the mark in relation to the goods or services covered by the registration. Unauthorized use of an identical or deceptively similar trademark in connection with relevant goods or services may constitute trademark infringement.
The owner should ensure that the trademark is registered in the appropriate classes and renewed when required.
2. Monitor the Market for Counterfeit Products
Brand owners should regularly monitor physical markets, distributors, e-commerce websites, social-media platforms and other sales channels for unauthorized products.
It is important to preserve evidence such as:
- Photographs of counterfeit products
- Screenshots of online listings
- Product samples
- Purchase invoices
- Seller and distributor information
- Advertisements and promotional material
- Website and social-media records
3. Send a Cease-and-Desist Notice
A brand owner can send a formal legal notice to the manufacturer, seller, distributor or other responsible party.
The notice may demand that the party:
- Stop manufacturing counterfeit products.
- Stop using the brand name and logo.
- Remove infringing advertisements and online listings.
- Stop selling, distributing or storing counterfeit products.
- Provide information about the source and distribution of the products.
- Preserve relevant records and evidence.
4. File a Trademark Infringement or Passing-Off Action
If the trademark is registered, the owner may bring a trademark infringement action against unauthorized use covered by the applicable legal provisions.
If the trademark is not registered, a passing-off action may still be available where the owner can establish goodwill or reputation, misrepresentation by the other party and resulting or likely damage.
5. Seek an Injunction
A brand owner can approach the appropriate court and seek an injunction to stop the unauthorized manufacture, sale or distribution of counterfeit products.
Depending on the circumstances, an interim injunction may also be sought when continued counterfeit activity could cause substantial commercial or reputational harm.
6. Seek Damages or Other Monetary Relief
Where legally appropriate, the brand owner may seek damages for losses caused by the counterfeit activity or an account of profits made by the infringing party.
The owner should maintain evidence supporting the financial impact, including sales records, customer complaints, diverted business and other relevant commercial information.
7. Take Action Against Imported Counterfeit Goods
If counterfeit products are being imported into India, a trademark owner can consider using the applicable customs enforcement mechanisms to prevent or restrict the movement of infringing goods.
This can be particularly important where counterfeit products are being manufactured outside India and then brought into the Indian market.
8. Consider Copyright Protection
A brand logo, artwork, packaging design or other original creative material may also qualify for copyright protection.
If counterfeit products reproduce protected artistic material without authorization, the owner may be able to pursue copyright remedies in addition to trademark remedies.
9. Consider Criminal Remedies
The Trade Marks Act and Copyright Act contain criminal provisions for certain forms of infringement and unauthorized use. Where the facts satisfy the relevant statutory requirements, the brand owner may consider approaching the appropriate law-enforcement authorities.
10. Act Against Online Counterfeit Sellers
For counterfeit products sold through online marketplaces or social-media platforms, the owner should preserve the complete listing information and use the platform's applicable intellectual-property complaint mechanism.
If the unauthorized activity continues, the owner may consider sending a legal notice or pursuing appropriate court proceedings.
11. Maintain Proof of Ownership and Brand Use
The brand owner should maintain documents such as:
- Trademark registration certificates
- Copyright records, where applicable
- Original logo and design files
- Licensing and distribution agreements
- Product packaging and photographs
- Invoices and sales records
- Advertising and marketing records
- Evidence of brand reputation
- Details of identified counterfeit sellers
- Samples and purchase records of counterfeit products
In summary, a brand owner facing counterfeit products should verify and document their intellectual-property rights, preserve evidence, identify the manufacturers and sellers, issue appropriate legal notices, and consider civil, customs or criminal remedies depending on the circumstances. A registered trademark can provide an important legal basis for preventing unauthorized commercial use of the brand, while copyright and passing-off principles may provide additional protection where applicable.
