While preparing a cease and desist letter, attorneys ensure that the letter layout includes, the business and trademark details of the IP holder, acumen about the goodwill of the IP holder, insights regarding the impugned trademark, the degree of abuse of the reprimanded trademark by the infringer, and, a list of the requisitions as required to be organized by the infringer.
A cease and desist letter is a notice sent to an individual or a business to stop an action like copying of trademarks. Essentially, cease and desist notices are sent to warn about unlawful or unwanted acts prior to initiating the corresponding legal proceedings.
Brand owners with trademark registrations need to keep a watch on activity of competitors to ensure that their brands or trademarks are not misused. The misuse or copying of trademarks by third parties can be intentional or unintentional. In some situations, the misuse can result in infringement of copyrights as well. It is advisable to send cease and desist letters immediately when one becomes aware of such situations.
If you receive a cease and desist letter, it is strongly advisable to send across a strong response in a timely manner. In the response, each and every point stated in the letter shall be responded to with utmost clarity. In addition, further affirmations (submissions, denials, comments) should be made as well. This will be helpful during subsequent legal proceedings if the need arises.
It is well known that cease and desist letters fall under the category of warning. However, it is extremely important to ensure that the contents of cease and desist letters cover all the important points because of the basic rule of pleadings. It means that the concerns raised at the stage of cease and desist letter should be broad enough to cover the future claims by way of legal proceedings if required. This would prevent the other party from taking defense that the claims raised in legal proceedings were not part of original cease and desist letter.
Trademark owners usually send cease and desist notices as the most simple and cost-effective method to combat trademark infringement in India. The trademark lawyers find cease and desist letters as less time consuming and most amicable way to settle matter. Generally, such communication is sufficient to eradicate improper competition in the market by demotivating and stopping the infringer from infringing, and in certain cases, it helps in legally recovering damages from the infringer.
However, in certain cases, the cease and desist letters can result in risks including the infringer documenting its own actions for a declaratory judgment for non- infringement if the cease and desist notice is not appropriately drafted. Also, the infringer may continue infringing the IP and simply ignore the notice which will force the IP holder to consider stricter courses of legal action to protect IP. In rare cases, the infringer can file a suit for a groundless threat against the owner of the intellectual property rights. So before sending a notice it’s very important to find out the extent of use, the years from which the infringer has been using, and then decide as to whether notice would be a good option or not. In some jurisdictions, while a cease and desist letter is not legally enforceable but it’s a most polite way to prohibit infringers to stop infringing on others intellectual property. Sometimes, a serious demand to cease using or copying marks may not work, whereas a formal letter can.
It is really important to send a timely response to a cease and desist letter. The best way is to get in touch with a trademark attorney to develop the best possible strategy for preparing a detailed response. Based on specific facts of the case, various grounds can be used to counter allegations that seem to be baseless. As an example, but not limited to, such grounds include, different target markets, dissimilarity between the brands, different consumer behavior (impulse buy vs sophisticated thoughtful purchase), different target jurisdictions, and the like.
To prevent illegal use of brand names and trademarks, brand owners follow a proactive brand protection strategy. This requires appropriate protection by way of trademarks, copyrights and designs. The development and execution of strong brand protection strategy is helpful in preventing infringement of trademarks. In use, brand protection by way of trademark filing ensures legal protection under the trademark law, which defines the trademark as a word, tagline, logo or other symbol, used to identify a product or a business. Therefore, the trademarks are advantageous in differentiating a product and its manufacturer from another.
As a general classification, the various types of trademarks include service marks, word marks, trade dress, collective marks, and certification marks. By definition, service marks are used to promote one or more services, whereas trade dress covers promotion of product packaging. In addition, a collective mark is used to identify a group, organization or association, and the products, services or members of the group, whereas a certification mark is used to guarantee the quality of a specific service or product.
Intellectual Property (IP) infringement means the violation of intellectual property rights. An IP holder has various lawful options to uphold their IP rights during the occurrence of infringement. In cases of IP infringement, be it with respect to trademarks, copyrights, licenses, or designs, a number of legal options are available to the IP holder. The option to file an infringement case or sue an infringer is always available from a legal point of view, another option is to issue a cease and desist letter to the infringer. Sending this letter is an option available, in case of any harassment or infringement of trademark or any IP rights. No specified method of delivery is required to send this letter because it is not a legal letter but always must have a record of delivery. Sending a cease and desist letter does not prohibit the offender from continuing the activity, but may subject them to legal action.
A trademark is a distinctive sign which identifies the goods and services of one person/enterprise from those of another. One can trademark letters, numbers, word, phrase, logo, graphic, smell sound mark, or a combination of colors. One of the classic examples is the Nike swoosh logo. The swoosh is a sound that can be heard when something zips past quickly by our side. The swoosh sign makes the logo a memorable business symbol. This differentiates the shoes of Nike from the shoes made by others.
Patent infringement is a violation of the exclusive right granted to the patent holder in accordance with the patent laws. The period of limitation for filing a suit for patent infringement is 3 years from the date of first infringement activity. Generally, the acts that constitute patent infringement during the term of a patent, include, manufacturing the patented invention as per the scope of the patent claims, marketing or selling the invention, using the patented invention, importing the patented products, and, offering the patented invention for sale.
The creator of literary, dramatic, musical, and artistic works, cinematograph films, and sound recordings enjoy exclusive rights to reproduce, perform, translate, and communicate their works to the public. This is the benefits the copyright holder holds. Copyright infringement is the use of copyright-protected material without the permission of the owner. Copyright infringement means a third party breaches the rights afforded to the copyright holder. It occurs when a work is distributed, reproduced, performed, publicly displayed without the permission of the copyright owner.
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Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
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