What is Cease and Desist Letter?
Experience has shown that trademark infringement can be an intentional misappropriation or an honest mistake as well. Thus, before resorting to an expensive and time-consuming trademark infringement litigation, it is always advisable to approach the infringer with an objective to resolve the dispute amicably and without the intervention of Courts. The first communication from the owner of a trademark (whether registered or not) to an infringer, requesting to halt the trademark infringement (cease) and not to continue it ever again (desist) is called as Cease and Desist Letter / Infringement Letter. This letter also warns the Infringer that if they don’t stop the alleged trademark infringement by a given date, the party can be sued before a Court of law.
Things to Keep in Mind Before Drafting a Cease and Desist Letter
- Even if your trademark is registered, it is not advisable to send a cease and desist letter to an infringer until you have actually used it in relation to your product and services because as discussed earlier Indian Courts have held in past that the user of a trademark have a stronger title than a registered proprietor.
- Confirm that you are not the infringing party before leveling any accusations and check who is prior user of the mark.
- Until and unless your trademark is well known in India, the conflicting mark must be both confusingly similar to your trademark and used in a related products / services. You may own â€œAntara Confectionaryâ€ for your bakery, but you would have a hard time proving that a beauty salon with the name â€œAntraâ€ would confuse your customers.
- Most importantly, be prepared to take additional steps if the company doesnâ€™t respond and/or continues to use the infringing materials. Failure to act in a reasonable period may result in the usage of infringer permitted by acquiescence and laches. In such an event, Courts are very reluctant in granting the most important discretionary remedy in any trademark dispute i.e. interim injunction.
How to Draft Cease and Desist Letter
The following instructions will help you draft any cease and desist letter. The numbers below correspond to numbers in the Sample Cease and Desist Letter, which can be downloaded by Clicking Here. Please review the entire document before starting this step-by-step process.
- Insert the name and address of the infringer. If the infringer is a registered company then you find the the address of registered office of that company from MCA21 Website i.e. mca.gov.in . If the infringing company appears to be operating from an address which is not the address of its registered office then send the Cease and Desist letter to both the addresses.
- Use this language if your company has not registered your trademark, and attach a sample of your trademark to the letter. Delete this clause if you have registered your trademark.
- Use this language if your mark is registered and attach a copy of the Registration Certificate to the letter. Insert your trademark registration number into the blank space provided. Delete this clause if you have not registered your trademark.
- Provide a brief history of you business and details about the usage of your trademark.
- You can increase or decrease the time frame within which the infringing party must respond to you. We have entered a default number of 15 days, since that allows enough time for a response while providing evidence that you take this matter seriously.
- Since this letter requests a written response within a certain number of days, you must provide an address (either physical or e-mail) to which this response can be sent.
If a small company is just starting out and has not invested time or money into its mark, consider tempering the language of the letter. If a direct competitor is clearly and aggressively infringing on your mark, consider making the language more forceful. In some cases, a simple phone call might be a good starting point
Formalities after sending the letter
- All of your correspondence with infringing companies / individuals should be kept in an organized and accessible file. If the infringement continues, this will show your vigilant defense of your trademark and will provide evidence that the other individual / company was intentionally infringing even after receiving notice.
Send a follow-up letterÂ to the infringer, if no reply is received to Cease and Desist letter after expiration of the prescribed period.