Section 142 explained: this guide covers what it means, who it applies to, the step-by-step process, documents required, fees, due dates and penalties in India — so you can stay compliant with confidence and avoid costly mistakes.
Section 142 protects a person who is threatened with an infringement action that the threatener cannot justify. A person aggrieved can sue for a declaration that the threats are unjustifiable, an injunction against their continuance, and damages, unless the threatener proves that the mark is registered and that the acts threatened are or would be infringement. Anyone sending a warning letter should read this section first; our trademark infringement notice service drafts notices with it in mind.
If someone threatens you, "by means of circulars, advertisements or otherwise", with an infringement action on a mark that is registered or alleged to be registered, you may sue for a declaration, an injunction and damages, unless the threatener satisfies the court that the mark is registered and the acts are or would be infringement. The right exists whether or not the threatener is the proprietor or registered user. A District Court is the lowest court for the suit. Legal practitioners and registered trade marks agents are protected for acts done professionally for a client.
Sub-section (1): the right to sue
Who is threatened and how
The section applies where a person, "by means of circulars, advertisements or otherwise", threatens another person with:
- an action or proceeding for infringement of a trade mark which is registered, or alleged by the threatener to be registered; or
- "some other like proceeding".
"Or otherwise" is wide; the threat need not be in a circular or advertisement. A threat can also be made about a mark that is only claimed to be registered.
Who may sue
"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 threatener. So the threat can come from anyone; the aggrieved person's right does not depend on the threatener's status.
What the aggrieved person can obtain
| Relief | Wording in the text |
|---|---|
| Declaration | That the threats are unjustifiable |
| Injunction | Against the continuance of the threats |
| Damages | "Such damages (if any) as he has sustained" |
The threatener's defence
The relief follows "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."
The burden lies on the threatener, and both limbs are needed:
- the mark is registered; and
- the acts threatened constitute (or, if done, would constitute) infringement.
An alleged but unregistered mark cannot meet the first limb.
Example. Prakash Sports sends a circular to dealers saying that Ravi Gear's "SPEEDX" shoes infringe its registered mark and that suits will follow. Prakash has only applied for registration. Ravi Gear, as a person aggrieved, can sue under sub-section (1). Prakash can defend only by satisfying the court that the mark is registered and that selling "SPEEDX" would infringe it. If it cannot, Ravi Gear can get the declaration, injunction and any damages it proves.
Sub-section (2): when the section does not apply
Sub-section (1) "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."
| Threatener's step | Effect |
|---|---|
| Registered proprietor commences and prosecutes an infringement action with due diligence | Sub-section (1) does not apply |
| Registered user acting under section 52(1) does the same | Sub-section (1) does not apply |
| Threat made, no action followed | Sub-section (1) remains available |
Note the words "with due diligence": filing and then letting the case lie does not seem to fit the text.
Sub-section (3): professionals protected
"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."
So a lawyer or registered agent who sends a notice for a client is not sued under this section; the client may be.
Sub-section (4): the court
"A suit under sub-section (1) shall not be instituted in any court inferior to a District Court." This tracks the floor in section 134. The text does not give the aggrieved person the extra forum of section 134(2); it simply sets the minimum court. Check where the suit may be filed under the Code of Civil Procedure, 1908.
Practical points
- Before sending a notice, confirm the mark is registered and that the alleged acts really fall within section 29 and the related provisions.
- Say only what you can prove; a notice that overstates the registration can invite a section 142 suit.
- If you receive a threat, keep the circular, advertisement or message; it is your evidence of the threat.
- If you are the registered proprietor, commencing and diligently prosecuting an action takes you outside sub-section (1).
- The section does not state any limitation period or amount of damages.
Need help sending or answering an infringement notice?
A notice that is accurate protects you; one that overreaches can expose you under section 142. Our trademark infringement notice team can help draft a measured notice or advise on a reply to a threat you have received.
Key takeaways
- A person aggrieved by a threat of an infringement action may sue for a declaration, an injunction and damages.
- The threatener need not be the proprietor or a registered user.
- The threatener escapes only by satisfying the court that the mark is registered and the acts are or would be infringement.
- The section does not apply where the registered proprietor or registered user commences and prosecutes an action with due diligence.
- Legal practitioners and registered trade marks agents acting professionally are protected.
- The suit cannot be filed in a court below a District Court.
Read next
- Section 134: suit for infringement before a District Court
- Section 135: relief in suits for infringement or passing off
- Cease and desist notice for trademark infringement
- Trademark infringement: what constitutes it and the remedies
Disclaimer: Based on the Trade Marks Act, 1999 as amended by the Tribunals Reforms Act, 2021 and the Jan Vishwas (Amendment of Provisions) Act, 2023, as consulted on 1 October 2026. Forms, fees and procedure are set by the Trade Marks Rules, 2017 as amended from time to time. This article is general information, not legal advice; check the official text before acting.