Someone Using Your Brand Name? How to Take Action, Step by Step

It usually starts with a customer’s message: “Have you opened a new branch in Kollam?” You haven’t. Someone else is using your brand name, or a name close enough to confuse customers, on a signboard, an Instagram page, a website or products sold online. Every week it continues, customers are misled and your reputation is at risk.

Whether or not your brand name is registered as a trademark, the law gives you ways to stop someone else from using it, or a name close enough to confuse customers. This article sets out, step by step, what a business can do when its brand name or trademark has been copied: what to collect first, how to check where you stand, and the legal and practical remedies available. For the general law on infringement, see trademark infringement: what you need to know.

Step 1: Do not react publicly; collect evidence

The first instinct is to post a warning on social media or call the other party. Both can backfire. Collect evidence first, quietly:

• Photographs of signboards, packaging, labels and shop fronts, with date and location
• Screenshots of websites, social media pages, online listings and advertisements, with the URL and date visible
• A test purchase with an invoice or receipt, where the goods are being sold
• Messages or calls from customers who were confused, with their consent to use them
• Details of the other party: name, address, GST number, company or firm details, domain registration details where available
• Your own proof of use: earliest invoices, advertisements, registrations, photographs, turnover figures and press mentions

Evidence of actual confusion and of your earlier use is often decisive.

Step 2: Check where you stand

Your position	What it means
Your mark is registered for the relevant goods or services	You can bring an action for infringement, and also for passing off
Your mark is applied for, but not yet registered	You can rely on passing off now, and on infringement once registered; pursue your application
Your mark is not registered or applied for	You can rely on passing off, based on your goodwill and prior use; file an application promptly
The other party has applied for a similar mark	You can oppose it within the time allowed after it is advertised. See how to file a trademark opposition
The other party has already registered a similar mark	You can seek rectification or removal of their registration, if you have prior use or other grounds

Run a search on the trademark register for both marks. See how to check trademark availability. Also check whether the other party used the name before you did; if they did, the position changes.

Step 3: Decide what you want

• Stop the use completely
• Make the other party change the name, logo or get-up so customers are not confused
• Withdraw their trademark application
• Remove online listings, pages or the domain
• Recover damages or the profits they made, and costs

The remedy depends on what you want, how serious the copying is, and the cost you are prepared to bear. Often a well-drafted notice and online takedowns achieve most of it.

Step 4: Cease and desist notice

A legal notice from an advocate, setting out your rights, the infringement and the demands, with a deadline. A good notice:

• Identifies your mark, your registration or application, and your history of use
• Describes exactly what the other party is doing, with evidence
• Demands specific actions: stop use, destroy material, withdraw applications, give an undertaking
• Gives a reasonable time to comply
• Reserves your right to take legal action without further notice

Many copiers, especially small local businesses, stop at this stage. Others respond by claiming they used the name first, which is why your proof of use matters.

Step 5: Online takedowns

• Marketplaces: most e-commerce platforms have intellectual property complaint procedures and brand protection programmes; a registered trademark makes takedowns faster
• Social media: platforms have trademark complaint forms for pages, handles and advertisements that misuse a mark
• Search and maps listings: listings that impersonate your business can be reported
• Domain names: a domain that copies your mark can be challenged; for .in domains through the .IN Dispute Resolution Policy, and for most generic domains through the UDRP

Step 6: Legal action

Civil suit for infringement or passing off

A suit can seek an injunction to stop the use, damages or an account of profits, delivery up of infringing material, and costs. Most trademark suits are commercial disputes, heard by the commercial court. The court can grant an interim injunction early in the case, if you show a strong prima facie case, urgency and harm, which is often the most valuable outcome. Pre-institution mediation is generally required for commercial suits unless urgent interim relief is sought.

Criminal complaint

Falsely applying a trademark and selling goods with a false trademark are offences under the Trade Marks Act. Police can act on a complaint, including searches and seizure, subject to the safeguards in the Act, such as the requirement that certain police officers obtain the Registrar’s opinion before a search. Criminal action is generally used for clear counterfeiting, not for disputes over similar names.

Proceedings before the Trade Marks Registry

• Opposition to the other party’s application
• Rectification or removal of their registration
• Pursuing your own application, with evidence of use

Customs

Where counterfeit goods are being imported, a registered trademark owner can record the mark with Customs so suspected infringing imports can be held.

Practical points

• Act quickly: delay weakens a request for an interim injunction, because it suggests there was no urgency
• Do not overstate your rights: a threat of legal action that is groundless can itself give the other party a claim
• Register your mark: if you have not done so, file now. See importance of trademark registration
• Check your own house: make sure your own use is consistent and well documented
• Consider settlement: a co-existence or transition agreement, with a clear change of name over a fixed period, is sometimes the most practical outcome

When the copier is a former employee, partner or relative

Copying is often done by someone who knows the business: a former manager, a franchisee whose agreement ended, an ex-partner, or a relative. The contract, partnership deed or family arrangement then becomes as important as trademark law. See two branches of a family, one brand name.

Points for Kerala businesses

• Copying is common for successful bakeries, restaurants, textile shops, jewellers and ayurveda products, often in a nearby town with a small change in spelling
• Malayalam and English versions of a name, and transliterations, should both be considered when filing and when assessing similarity
• Gulf markets matter for many Kerala brands; Indian registration does not protect the mark abroad, so consider registration in key countries

Frequently asked questions

Our trademark is not registered. Can we still act?

Yes, through a passing off action, if you can show goodwill, misrepresentation and damage. Registration makes enforcement easier, so file an application as well.

The other shop uses a slightly different spelling. Is it still infringement?

Possibly. The test is whether the marks are deceptively similar, considering how they look and sound, the goods, and the customers. Small spelling changes often do not avoid confusion.

How long does it take to stop them?

A notice and online takedowns can work in days or weeks. Court action takes longer, but an interim injunction, if granted, can stop the use early in the case.

Can we claim damages?

Yes, in a civil suit. In practice, injunctions and costs are often more significant than damages, which require proof of loss or of the infringer’s profits.

ചുരുക്കം (Summary in Malayalam)

ആരെങ്കിലും നിങ്ങളുടെ ട്രേഡ്മാർക്ക് പകർത്തിയാൽ ആദ്യം തെളിവുകൾ ശേഖരിക്കുക: ഫോട്ടോ, സ്ക്രീൻഷോട്ട്, test purchase ബിൽ, ഉപഭോക്താക്കളുടെ ആശയക്കുഴപ്പം, നിങ്ങളുടെ ആദ്യകാല ഉപയോഗത്തിന്റെ രേഖകൾ. നിങ്ങളുടെ മാർക്ക് രജിസ്റ്റർ ചെയ്തിട്ടുണ്ടോ, അവർ അപേക്ഷിച്ചിട്ടുണ്ടോ എന്ന് പരിശോധിക്കുക. അഭിഭാഷകൻ വഴി cease and desist notice, ഓൺലൈൻ takedown, opposition അല്ലെങ്കിൽ rectification, injunction-നായി civil suit, വ്യാജ ഉൽപ്പന്നങ്ങൾക്ക് ക്രിമിനൽ പരാതി എന്നിവയാണ് പരിഹാരങ്ങൾ. വേഗത്തിൽ പ്രവർത്തിക്കുക, രജിസ്റ്റർ ചെയ്തിട്ടില്ലെങ്കിൽ ഉടൻ അപേക്ഷിക്കുക.

This article gives a general overview of remedies under the Trade Marks Act, 1999 and related law. Procedures and practice are revised from time to time, and outcomes depend on the facts and evidence; for accurate and current requirements, refer to the Act, the rules and the procedures of the relevant court or authority. The article is not advice on any particular case.