A Trademark Infringement Notice, often referred to as a Cease and Desist Letter, is a formal legal communication sent by a trademark owner (or their attorney) to an individual or entity (the alleged infringer) who they believe is using their registered trademark without authorization. The purpose of such a notice is to:
Inform the alleged infringer
Make them aware that their actions are infringing on the trademark owner’s rights.
Demand cessation of infringing activities
Instruct them to immediately stop using the infringing mark.
Seek corrective action
Request actions like removing infringing products from the market, taking down websites, discontinuing advertising, or providing an account of profits.
Open lines of communication
Often, it’s the first step to resolving the dispute without immediate litigation.
Establish legal standing
It demonstrates that the trademark owner is aware of the infringement and has taken steps to enforce their rights, which can be important if litigation becomes necessary later.
Key Components of a Trademark Infringement Notice
A well-drafted TM Infringement Notice typically includes:
Identification of the Trademark Owner
Full legal name and contact details of the party claiming infringement.
Identification of the Alleged Infringer
Full legal name and contact details of the party accused of infringement.
Details of the Registered Trademark
- The specific trademark (word, logo, phrase, etc.).
- The trademark registration number(s).
- The date of registration.
- The classes of goods/services for which the trademark is registered.
- A clear statement that the trademark is valid and subsisting.
Description of the Infringing Activity
- How the alleged infringer is using the mark.
- Where the mark is being used (e.g., product packaging, website, social media, advertisements, store signage).
- For what goods/services the infringing mark is being used.
- Evidence of infringement (e.g., screenshots, photos, links, purchase details).
Legal Basis for the Claim
- Reference to the relevant provisions of the Trademarks Act, 1999 (e.g., Section 29 for infringement, Section 27 for passing off).
- An explanation of why the alleged infringer’s use constitutes infringement (e.g., identical or deceptively similar mark, identical or similar goods/services, likelihood of confusion among consumers).
- If applicable, a claim for “passing off” (for unregistered trademarks with prior use and goodwill).
Demands/Actionable Items (Cease and Desist)
- Immediate cessation of all use of the infringing mark.
- Withdrawal of infringing products/materials from the market.
- Deletion of infringing content from online platforms.
- Transfer of domain names or social media handles.
- An undertaking (written promise) from the infringer not to use the mark in the future.
- Sometimes, a demand for an “account of profits” made from the infringing activity or “damages” suffered by the trademark owner.
- A request for an apology or public statement.
Deadline for Response
A specific timeframe (e.g., 7, 10, or 15 days) within which the alleged infringer must respond.
Consequences of Non-Compliance
A clear statement that failure to comply with the demands within the stipulated time may lead to further legal action, including filing a lawsuit for trademark infringement, seeking injunctions, damages, and costs.
What to Do If You Receive a Trademark Infringement Notice
Receiving such a notice can be alarming, but it’s crucial to remain calm and follow these steps:
Do NOT Panic or Ignore It
Ignoring the notice can lead to more severe legal consequences, including a lawsuit.
Do NOT Destroy Evidence
Preserve all evidence related to your use of the mark and the products/services in question.
Do NOT Contact the Sender Directly (Immediately)
Avoid making any admissions or apologies before consulting legal counsel. Anything you say can be used against you.
Consult with our Trademark experts:
Analyze the Notice
Understand the claims, the legal basis, and the demands.
Assess the Validity of the Claim
Determine if the trademark owner’s claim is strong, weak, or baseless. This involves:
- Verifying the validity and status of the claimant’s trademark registration.
- Evaluating the similarity of the marks and goods/services.
- Assessing the likelihood of confusion.
- Investigating any prior use rights you might have (if applicable).
Advise on Options
Explain your legal options, which may include:
Complying with the Demands
If the claim is strong and the cost of litigation is high, it might be advisable to cease the infringing activity.
Negotiating a Settlement
Attempting to reach an agreement (e.g., a limited use agreement, a transition period, or a financial settlement).
Disputing the Claim
If you believe the claim is baseless, or you have strong counter-arguments (e.g., prior use, no likelihood of confusion, the claimant’s mark is invalid).
Filing a Counter-Claim/Rectification
If you believe the claimant’s trademark itself is invalid, you might consider filing for its rectification/cancellation.
Draft a Response
Prepare a formal, legally sound response to the notice. This response typically acknowledges receipt, reserves rights, and outlines your position or proposed course of action.
Represent You
Handle all communications and negotiations with the opposing party.
In India, trademark infringement carries significant penalties, including injunctions (stopping the activity), damages, rendition of accounts of profits, and even criminal penalties in cases of counterfeiting. Therefore, taking a TM Infringement Notice seriously and seeking our experts legal advice immediately is paramount.