This article has been written by Aarshiya Punera, pursuing a Certificate Course in Introduction to Legal Drafting: Contracts, Petitions, Opinions & Articles from LawSikho and edited by Shashwat Kaushik.

It has been published by Rachit Garg.


The first half of 2023 saw a rise in trademark infringement cases in the courts. The famous coffee shop chain in Delhi, Sardar Baksh, changed its name to Sardar-ji-Baksh after being sued by Starbucks. Rajnigandha was awarded Rs. 3 lakh as damages when Rajnipaan tried to sell its flavoured pan masalas on the goodwill of the former. Recently, the Madras High Court dismissed the appeal of PhonePe in a trademark infringement suit against DigiPe. Trademark owners have time and again, and rightly so! ferociously protected their trademarks.

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What is a trademark

Markets today are highly competitive; trademarks help owners promote and sell their goods and services. They establish a brand’s identity, ownership, and reputation. For consumers, trademarks help them determine the origin and quality of goods and services. They play a role in determining whether the consumer will buy the product or not.

Section 29 of the Trade Marks Act of 1999 defines a trademark as a mark capable of being represented graphically and that is capable of distinguishing the goods and services of one person from another. The mark may include the shape of the goods, colour combination, and packaging. The three stripes of Adidas, the red and white colour combination of Zomato, and the letter “M” in McDonald’s are all examples of trademarks. 

What is trademark infringement

A trademark owner has the exclusive right to use his trademark. He can prevent his competitors from using his brand name, logo, and market reputation. He has a right to prevent others from using any mark that establishes his ownership. He is also entitled to relief when this exclusive right to enjoy his trademark is infringed.

A trademark is said to be infringed when a person other than the proprietor or person who is permitted to use it uses, in the course of trading, a mark that is identical with, or deceptively similar to, the trademark about goods or services in respect of which the trade mark is registered. Simply put, trademark infringement occurs when any entity, whether the owner or the licensee, uses a trademark similar or closely identical to the original trademark, thus creating confusion among consumers and benefiting from it, taking unfair advantage of the reputation of the original trademark

When is a trademark said to be infringed

A person is said to infringe the trademark of another when:

  • The trademark is identical or deceptively similar to the owner’s trademark and is used for the same goods and services.
  • The trademark confuses the public as being related to the owner’s trademark
  • The person uses the owner’s trademark for labelling or packaging other goods and services without due authorization.
  • The person uses the owner’s trademark as a trade name for his business or goods.
  • The person uses the owner’s trademark for advertising his goods and services and thus takes undue advantage of the registered trademark.

Counter-statement in a trademark infringement case

An entity is entitled to protect its trademark. If it feels that its trademark is being infringed, it can file a complaint with the concerned trademark registry, claiming infringement of its trademark by the other. The other party, against whom the allegation has been made, is liable for an injunction, damages, or cancellation of registration unless it proves non-infringement.

A counterstatement is a legal document filed before the concerned legal authority by the defendant (the party who is accused of infringing the trademark) against the plaintiff (the party who owns the trademark). It is a detailed response of the defendant to the plaintiff on allegations of trademark infringement levelled against him.

A counter statement is attached to Form TM-O and submitted to the registry along with the required fee (physical filing Rs 3000 and online filing Rs 2700).

Purpose of counter statements

A counterstatement consists of arguments and evidence from the defendant establishing his fair use and non-infringement of the trademark. The purpose of the counterstatement is to counter the plaintiff’s allegations and rebut his claims that his trademark was infringed. It states reasons as to why the defendant has not infringed the trademark of the owner.

Grounds of defence against a trademark infringement claim

To counter the plaintiff’s claim of his trademark being infringed and to defend one’s use of the trademark, the grounds of defence should be cogent and strong. The defendant should be able to convince the concerned authority that his use of the said trademark does not, in any way possible, create confusion among consumers or cause any loss to the plaintiff.

To establish noninfringement of the owner’s trademark, the following grounds can be proved:

  1. Prior use: The person who gets the trademark registered first has a claim against all the subsequent applicants. The defendant can show that he registered his trademark before the plaintiff and that his trademark was already in the public domain before the plaintiff.
  2. No similarity between the trademarks: Strong evidence can be produced by the defendant stating that the distinctive character of the owner’s trademark is not diluted and that his trademark does not confuse the general public.
  3. Delay and acquiescence: The defendant can establish that the trademark owner has given up his right to claim any relief by remaining silent for a long duration (5 years, as given under Section 33 of the Trademarks Act, 1999) and has thus impliedly permitted the defendant to use their trademark. This is known as the doctrine of Laches.
  4. Permitted use: If the trademark owner assigns the use of his trademark to the defendant, he is believed to have consented to it. Therefore, there is no infringement if the trademark is used by a rightful licensee.
  5. Fair use: The defendant can establish that his use of the trademark is fair and that he is complying with the honest practises in the industry and has no intention to take unfair advantage or create confusion.
  6. Non-use of the trademark by the registered proprietor: If the owner is not using the trademark and is also preventing his competitors from using the said mark, it does not serve the interests of anyone. The defendant, if he can show that there is no use of the trademark by the owner and that the defendant has a legitimate interest in using the said mark, can counter the infringement claim.

Essentials of a counter statement

A counterstatement helps the defendant put his side of the story forward; therefore, a well-crafted counterstatement, along with strong evidence and complete documents, strengthens the case of the defendant. 

The following are the things that should be included in an effective counter statement:

  1. Introduction: Complete details of the defendant, including his name, contact details, address, business, trademark registration number, the goods or services for which the trademark was obtained, etc.
  2. Background: The factual background of the case states the claim of the plaintiff, the allegations against the defendant, and the procedural history of the case.
  3. Arguments in support of your use: The most important part. This part includes a paragraph-wise rebuttal of the plaintiff’s allegations. The defendant has to establish non-infringement and list all the grounds on which he is denying the allegations.
  4. Evidence: Evidence in the form of registration documents, communications with the plaintiff, a licence certificate and other supporting documents has to be attached to strengthen the case of the defendant.
  5. Relief sought: The counter-statement has to end with a relief that is sought by the defendant. It can be an amicable resolution of the matter, dismissing the plaintiff’s claim aside or declaring the defendant’s use of the trademark as fair.
  6. Verification: The counterstatement has to be verified for its truthfulness by the defendant.


Drafting a counter statement in a trademark infringement case requires a delicate balance of legal expertise and strategic thinking. By thoroughly understanding the allegations against you and conducting a comprehensive analysis of your own trademark rights, you can craft a compelling counter statement.

In conclusion, a meticulously drafted counter statement is your opportunity to assert your rights, refute allegations, and showcase the merit of your position. Approach it with diligence, backed by legal acumen, and present a compelling defense that stands up to scrutiny.A counter statement thus plays a pivotal role in making the defendant’s case. It has to be drafted while taking care of all the possible allegations that could be made by the complainant. A strong counter statement includes clear clarifications to the complainant’s allegations and is supported by evidence.


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