Challenges In Cross-Border Trademark Enforcement

Introduction

India presents significant growth opportunities for Multinational Companies ("MNCs") – given the large population and thriving e-commerce system supported by widespread internet penetration. Pertinently, trademarks, encompassing brand names, logos, trade dress, slogans are the most important assets for MNCs. Trademarks serve as the foundation for MNCs to monetise their business, innovation and creativity. Consequently, trademarks demand the highest level of protection to safeguard the MNC's brand value and prevent infringement.

However, notwithstanding the several benefits that India has to offer to MNCs, the country also faces complex legal and administrative hurdles in the enforcement and protection of an MNC's IP assets, primarily due to the territorial nature of trademark laws – that limits cross border enforcement protection. From counterfeit luxury bags in Mumbai to unauthorised online listings in Singapore, MNCs in India face a constant struggle in protecting their trademarks across the world.

This article examines the challenges faced by MNCs in India while enforcing their trademark rights internationally, and lays down strategic approaches for MNCs to adopt, to better safeguard their trademark rights.

Cross – border Infringement of Trademarks

Under the Trade Marks Act, 1999 ("The Act"), trademark infringement occurs when a person, who is neither the registered proprietor nor a permitted user, uses a mark that is identical or deceptively similar to a registered trademark, in relation to identical or similar goods or services covered by the registration – and such use results in a likelihood of confusion among consumers¹. Use of an infringing mark may over inter alia the goods/ services in question or in relation to promotion and advertising or packaging or brand collaterals or business correspondences. The remedies available to the proprietor include injunctions, damages, accounts of profits, and delivery up of infringing goods or materials².

Cross – border trademark infringement occurs when there has been an unauthorized use of one's registered trademark by an entity or multiple entities belonging to two or more different countries for identical or similar goods.

For instance, Amul, the iconic Gujarat-based dairy brand owned by the Gujarat Cooperative Milk Marketing Federation (GCMMF), is a registered trademark under Class 29 for dairy products, including milk, butter, ghee, and edible oils. In September 2024, Amul initiated legal proceedings against the Italian company Terre Primitive for marketing "Amuleti" cookies and chocolate-coated biscuits that closely resembled the Amul trademark. GCMMF argued that Terre Primitive had blatantly copied Amul's distinctive logo, font, and overall design, merely adding the suffix "eti." Given Amul's status as a "well-known mark" and its significant global presence, the Delhi High Court held in Amul's favour. The court issued a permanent injunction restraining Terre Primitive from using any identical or deceptively similar mark, directed the removal of infringing goods from its website, and instructed Meta Inc. to block the company's social media pages promoting the infringing products. The court replied upon the "effects test" and the "sliding scale" principle, which finds jurisdiction if a foreign defendant's website is accessible to consumers in India and creates a high likelihood of confusion or deceptive practices that harm the well-known Indian brand. In this case, Amuleti" cookies and biscuits were sole in India via e-commerce portals. However, in most cases, selecting legitimate jurisdictions for the resolution of disputes is extremely problematic, particularly where the infringing activities span several jurisdictions. This territorial aspect makes enforcement of trademark rights very difficult.,

International IP Frameworks

A robust framework for cross border IP protection has been enforced by several international organizations, some of which are listed below:

1. TRIPS Agreement: The Trade-Related Aspects of Intellectual Property Rights ("TRIPS Agreement") establishes the minimum and uniform standards for IP protection and enforcement, that is followed across its member countries. The primary objective of the TRIPS Agreement is to ensure protection of IPRs and promoting technological innovation while balancing social welfare and public interest³.
2. WIPO Arbitration and Mediation Center: The WIPO Arbitration and Mediation Center offers alternative dispute resolution options, such as mediation, arbitration, expedited arbitration to enable private parties to settle their domestic or cross-border commercial disputes in a time and cost-efficient manner⁴.
3. Madrid Protocol & Patent Cooperation Treaty: The Madrid Protocol for trademarks and the Patent Cooperation Treaty for patents offer a global registration system that offer IP holders to register their assets easily across several jurisdictions, by way of a single application and a one-time application fees⁵.
4. Treaties and MOUs: Several countries enhance cross-border IP enforcement by way of bilateral and multilateral arrangements, that allow information exchange, joint investigations, and coordinated measures to combat infringement across borders.
5. Harmonized IP laws: Frameworks such as those set up within the European Union allow synchronized IP laws in their region. Such regional mechanisms streamline processes for MNCs in protecting and enforcing their IPRs across different jurisdictions within the said region.

Limitations of Cross-Border Enforcement of Trademarks

Cross-border trademark enforcement faces serious challenges relating to international IP frameworks, making redressal extremely difficult, and even impossible in some cases. Some of the key limitations and obstacles seen in cross-border trademark enforcement are outlined below:

1. Trademark rights are territorial: Trademarks are inherently territorial. Therefore, to enforce rights, MNCs must obtain registration in all relevant jurisdictions where they currently operate or intend to expand in order to enforce their rights effectively. While proving the well-known status of a trademark assists in building the mark's reputation, remedies remain subject to domestic procedures.
2. Parallel Imports: Parallel import refers to the unauthorized importation of genuine goods. Enforcement of IPRs in this case depends on whether such imports affect brand reputation via repackaging, grey-market sales or altered warranties – which requires strategic litigation and numerous contractual safeguards to build a successful case.
3. Counterfeiting: Counterfeiting often involves numerous small-scale manufacturers, distributors, and retailers, that are spread across different regions. This decentralization and fragmentation makes enforcement extremely complex, time consuming as well as costs exhaustive.
4. Customs Enforcement: Detention and seizure of infringing goods by the customs department faces practical problems, for instance lack nuanced trademark determinations by the officials. It is relevant to note, seizure at customs only acts at entry points, completely ignoring domestic circulation of counterfeit goods.
5. Online Infringement and Platform Liability: The rise of e-commerce and social media has heightened enforcement complexities. Entities can sell and advertise counterfeit products across multiple platforms under pseudonymous accounts. Intermediary liability frameworks and notice-and-take-down mechanisms provide a legal framework, however, enforcement is often slow and inconsistent, particularly against platforms hosted abroad.
6. Procedural and Evidentiary Challenges: Cross-border trademark litigation requires robust evidence to prove prior adoption and use of the trademark and proof of consumer confusion resulting from the infringing goods.
7. Weak IPR regime in some jurisdictions: Some countries have underdeveloped IP enforcement frameworks due to their political and/or economic constraints. These "safe havens" for infringers pose a significant challenge for rights holders across the globe.

Way forward – Effective Strategies for International IP Enforcement

Protecting intellectual property (IP) across fragmented global markets, particularly in key jurisdictions like India, requires a proactive, integrated business strategy. Effective enforcement is about building a resilient, multi-layered system that anticipates counterfeiter tactics.

Phase 1: Establish Foundational Strength

The ability to enforce IP starts with its robust registration.

1. Global-Local Alignment: Register all key assets (trademarks, patents, designs) early in every major sales, manufacturing, and high-risk market. Leverage international systems like the Madrid Protocol and PCT to streamline and harmonize these filings, cutting costs and complexity.
2. India Portfolio: In high-growth markets like India, ensure comprehensive domestic registration covering all variants, trade dress, and common law use. A well-maintained, professionally managed portfolio is the bedrock of swift, aggressive action.

Phase 2: Targeted Digital and Legal Action

Enforcement must be precise, coordinated, and technologically driven.

1. AI Monitoring: Deploy AI-based monitoring tools for continuous surveillance of online marketplaces, social media, and domain registrations. Early detection is crucial for rapid response.
2. Strategic Online Takedowns: Cultivate strong working relationships with major e-commerce platforms and use their brand protection programs aggressively. Create a clear escalation path to pursue persistent, high-volume online infringers.
3. Coordinate the Attack: Implement a structured strategy to target high-impact offenders, major distributors or manufacturing hubs. Coordinate litigation, criminal complaints, and customs action simultaneously, leveraging interim remedies for swift operational freezes and evidence seizure.

Phase 3: Systemic Deterrence

Long-term protection requires shifting market dynamics by reducing both supply and demand for fakes.

1. Collaboration: Actively engage with local law enforcement, customs, and industry associations to share intelligence and coordinate joint raids. Public-private partnerships maximize enforcement reach.
2. Educate the Consumer: Run anti-counterfeiting campaigns and provide consumers with simple in-app authentication tools. By highlighting the risks and exposing the quality gap of fakes, you reduce demand and enhance brand image.
3. Technology as Evidence: Adopt forensic solutions like serialization and tamper-evident packaging. These not only deter counterfeiting but also provide demonstrable, court-ready evidence in enforcement actions, making it exponentially harder for infringers to operate.

Conclusion

Cross-border trademark enforcement remains a complex and constant battle. The territorial limits of IP law and the decentralized nature of online infringement create continuous obstacles, especially in high-growth markets. While India offers immense market potential, MNCs must navigate these serious legal and administrative hurdles. By combining meticulous domestic registration, rigorous supply chain control, tech-enabled monitoring, and strategic collaboration with local authorities, businesses can move beyond mere reaction to infringement. By proactively addressing both the supply and demand for counterfeit goods, companies can protect brand value and underpin their sustained growth.

Footnotes

1. Section 29, Trade Marks Act, 1999.

2. Section 135Trade Marks Act, 1999

3. Article 7, TRIPS Agreement.

4. https://www.wipo.int/amc/en/.

5. Article 8, Madrid protocol and Article 3 of the Patent Cooperation Treaty.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.