Chapter XIII - Miscellaneous
Section 142
Section 142: Groundless infringement threats
An aggrieved person may challenge unjustifiable infringement threats and seek a declaration, injunction and proven damages within the section’s conditions.
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Need advice on Section 142?
This article is for general information. Refer to the Trade Marks Act, 1999 official text for the official provisions. If you need professional advice for your situation, contact Bizeneed.
Statutory text
Bare law
(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceeding, a person aggrieved may, whether the person making the threats is or is not the registered proprietor or the registered user of the trade mark, bring a suit against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats and may recover such damages (if any) as he has sustained, unless the first-mentioned person satisfies the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened, constitute, or, if done, would constitute, an infringement of the trade mark.
(2) The last preceding sub-section does not apply if the registered proprietor of the trade mark, or a registered user acting in pursuance of sub-section (1) of section 52 with due diligence commences and prosecutes an action against the person threatened for infringement of the trade mark.
(3) Nothing in this section shall render a legal practitioner or a registered trade marks agent liable to an action under this section in respect of an act done by him in his professional capacity on behalf of a client.
(4) A suit under sub-section (1) shall not be instituted in any court inferior to a District Court.
Rule and business relevance
The threatener can defend by satisfying the court that the mark is registered and the threatened acts constitute or would constitute infringement. The provision also excludes the specified diligent infringement action and protects legal practitioners or registered agents acting professionally for clients.
Limits and related provisions
Not every demand letter is automatically unlawful. Assess the precise threat, registration, alleged acts and any diligent action; the suit cannot be brought below a District Court.
Hypothetical business example
Hypothetical example: A retailer receives threats about an alleged registration and obtains advice on whether to seek relief, while the right holder must substantiate registration and infringement.
Practical decision flow
Preserve the threat and identify the aggrieved person.
Check registration and the conduct threatened as infringement.
Consider the statutory exceptions and proper court before bringing a claim.
Applying the Act and current procedure
Read the statutory rule together with the applicable Trade Marks Rules, current Registry directions and the facts of the particular mark. Forms, fees and procedural requirements should be checked against their current official source before filing.
Practical checklist
Do
- Preserve the threat and identify the aggrieved person.
- Check registration and the conduct threatened as infringement.
- Consider the statutory exceptions and proper court before bringing a claim.
Avoid
- Not every demand letter is automatically unlawful. Assess the precise threat, registration, alleged acts and any diligent action; the suit cannot be brought below a District Court.
Glossary
- Groundless threat
- A threat subject to the section’s unjustifiability test.
- Diligent-action exception
- The subsection (2) exception for the specified commenced and prosecuted infringement action.
Frequently asked questions
Can damages be recovered without loss?
The text refers to damages, if any, sustained.
Is the professional representative automatically liable?
Subsection (3) protects the specified professional acts on behalf of a client.
What court level is required?
The suit cannot be instituted below a District Court.
Need help applying this provision to your situation?
Contact BizeneedLast updated 10 October 2026