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How to Win a Trademark Infringement Case?


Last Updated on June 15, 2024 by Swetha LLM

An important component of any company’s intellectual property and brand identification are trademarks. A trademark prevents third parties from using the brand, slogans, logo, and other distinctive features in ways that could lead to misunderstandings with customers. Nevertheless, lawsuits alleging trademark infringement are common, and companies may file such a claim against another or face one themselves.

The Aspects of a Possible Trademark Infringement

There are two or more opposing parties in every suit. A trademark infringement lawsuit may normally originate from one or more of the following situations involving your brand and another.

  • One of your competitors has registered a trademark.
  • A registered trademark holder from another company files a complaint against the trademark you use.
  • The proprietor of a registered trademark thinks that your trademark is identical to theirs.
  • When you are the registered owner of a brand, a competitor starts using it without your consent.
  • You discover that a rival company is using the same colour, packaging, taglines, product design, logo, brand name, or any other distinctive feature.

How can I see any similarities to trademarks?

The ultimate criterion for assessing if a trademark has been violated or not is that a trustworthy customer looking at the products and services is probably going to mistake two marks or believe they are the same. Despite its subjectivity, the decision is predicated on a few specific criteria:

  • The similarity in sound;
  • The similarity in words or letters;
  • When the logo is identical;
  • The similarity in business.

How to win a Trademark Infringement case?

A trademark lawsuit entails significant financial costs for both the plaintiff and the alleged infringer. Additionally, it can damage a business’s reputation, regardless of how big or small it is. This is why it may be quite important to make compelling arguments in court. Thus, in order to succeed in an action for trademark infringement, you need to be aware of the subsequent points.

On behalf of the Plaintiff

The steps to be taken by the plaintiff in case of Trademark Infringement:

Understanding your rights to intellectual property

You should check your registration prior to continuing, once more, as the plaintiff. This is due to the reality that you will need to provide evidence of the mark’s first usage (should it have been in use before the purported infringer) and consider that the trademark has not expired. Remember to incorporate all rights that you may have granted to outside companies. You will nearly always be in the driver’s seat for the duration of the trademark registration, remaining active.

Is the time and money worth it all?

Consider whether suing is truly worth your time and financial investment. You can request a cease-and-desist order if you see that the case isn’t too significant yet. This type of order is less expensive and frequently works. A cease-and-desist letter essentially tells the person being charged with infringement to halt their alleged illegal activity and not to start up again (desist). Should the infringement cause significant harm to your business’s operations and brand, it should be worthwhile to invest time and resources in pursuing the litigation.

Hire a knowledgeable trademark attorney

This should make it obvious that you need to work with an experienced lawyer in matters involving infringement. Experienced trademark lawyers will help you at every stage before you launch a lawsuit. Another item to think about is attorney fees. In some circumstances, if the defendant prevails in court, they won’t be required to reimburse the plaintiff’s legal costs. Your lawyer may also assist you in reaching a settlement if you simply want to request a specific sum of money to cover damages or if you want the unauthorized use of your trademark to end.

Discover the Infringing Mark’s Business Domain

  • As the main criteria that the courts employ to ascertain if two organizations are using a similar mark, it ought to be the place to start.
  • Even yet, the infringing brand however, it may be confusingly similar to the registered trademark if it makes no reference to the industry.

The Length of the Rival Company Regarding the Mark’s Development

  • Once it has been determined that the rival is violating his or her trademark by providing a similar good or service to your company, he or she has to gather some background data. It would entail learning how long they have operated their company.
  • It must also determine how long the infringing trademark has been used.
  • It is probably more credible if the mark was used before their mark. In most cases, the party that first started using the mark wins in the courts.

Establishing the Mark’s Original Use

If they have started to use the mark, then certain details about that use may or may not be open to the public’s access. There will be no results from this search if the mark is unregistered. The best course of action in this situation would be to prove that you were the first to use the mark.

He or she may still be able to gain legal access by using the mark earlier, even if it is registered later. One or more of the following might suggest previous use of the mark:

  • Using the mark on letterheads, internal meetings, and stakeholder communications
  • Prominent positioning of the mark, like on websites, in ads, on social media pages, etc.

On behalf of the defendant

Even when the Plaintiff may benefit in certain ways, the defense can make a lot of compelling arguments. The defendant uses a defense for trademark infringement to show that they did not make illicit use of the trademark of another person. The following are some ways to deny any claims of infringement:

Reasonable Use

This is one of the most often used disputes of claims of infringement. Its prevalence can additionally be attributed to its multifactorial nature. One such is classic fair use, which is basically the use of the trademark of the plaintiff to describe the goods or services provided by the defendant. For illustration, the defence would win out in court if the plaintiff, who owns a brand that is comparable to “Strawberfilled,” sued a different business for using the word “strawberry-filled” in its products. This is only because the plaintiff was unable to prevent others from using the offensive term.

Another kind of fair use is nominative fair use, which allows the use of another trademark for as long as it doesn’t confuse consumers. For example, one small watch shop of a different brand that sells Casio watches, can claim that they can repair and market Casio watches. But they must have to make it clear that they don’t formally possess the Casio brand.

The Laches Doctrine

By claiming that the plaintiff’s claim has been unreasonably delayed, this is used as a defense. In other words, the plaintiff has already run out of time because they did not file the assertion as soon as possible.

Important factors for cases of trademark infringement include:

1. Jurisdiction/venue: Considering the locations of the parties in addition to the seriousness of the violation, where should the lawsuit be filed?

2. Remedies desired: Are you going to ask for financial losses, an injunction (a court order that stops the infringement), or both?

3. Trial strategy: How will you answer to the jury or the court with your arguments and supporting documentation?

4. Potential defenses: Prepare to counter any defenses, such as equitable usage or lack of consumer confusion that a third party may raise.

You can be able to win in court with the help of a trademark specialist like Kanakkupillai. They can help you navigate the legal requirements, build a persuasive argument, and assert your ownership of the trademark.

Protect Your Brand’s Value

Handling cases of trademark violation can be challenging and time-consuming for business owners. However, preserving your brand’s value, reputation, and place in the market depends on protecting its intellectual property. It calls for rapid thought and action.

In Conclusion

A successful lawsuit for trademark infringement demands legal strategy and experience. Brand and reputation damage from trademark violations can be severe. Building a strong argument to protect your reputation and brand can be facilitated by familiarity with Indian trademark laws, the arrangement of relevant evidence, and legal advice from a knowledgeable intellectual property lawyer. It is important that you consult with an experienced intellectual property attorney and take legal action immediately if you believe someone is using your brand without permission. In order to win a case pertaining to the infringement of a trademark, you must protect your brand and hire competent legal assistance.


1. What options do I have if I have a trademark violation case?

Common remedies consist of monetary compensation, injunctive relief (a court order forbidding infringement), or sometimes both.

2. Why is trademark defense so important?

Since your reputation and status have grown over time, maintaining your trademark is crucial to maintaining your brand name, image, and market position.

3. How do I determine the order of priority for use?

The date of trademark registration, evidence of the earliest commercial use, or documentation of consistent use over time can all be used to determine the priority of use.

4. Could settlement negotiations possibly take place?

In order to influence the outcome and allow for compromise on both parties, settlement negotiations may really present a speedier and far more economical alternative to litigation.

5. How can the violation of trademarks be resolved?

Sending a cease-and-desist letter is often the first step in notifying the violation of your rights to a trademark and making them aware of the problem. These letters describe the violation that has taken place and permit the trademark owner to make future demands.

Swetha LLM

Swetha, LLM, a lawyer with skills in writing legal content, is passionate about simplifying complex legal concepts and engaging readers with her insights of nuanced legal ideas. She is able to preserve the accuracy of legal material while adjusting the tone and style to fit the audience.