INTRODUCTION
A Cease-and-Desist Notice is a document that is sent to a person or entity, putting them on notice that they are engaging in an activity that infringes another person’s or entity’s trademark rights, and requesting them to immediately stop that activity (cease) and refrain from doing it in the future (desist).
A Cease-and-Desist Notice is usually sent to demand the other party to cease activities like: infringement of trademark; passing off etc. Issuing a Cease-and-Desist Notice to an infringer is not mandated under any law. Essentially, cease and desist notices are sent to warn about unlawful or unwanted acts prior to initiating the corresponding legal proceedings. So, while the law states that a suit for infringement may be filed in any Court that is not inferior to a District Court, it is always advisable to first issue a Notice of Cease-and-Desist. Sending a Cease-and-Desist Notice to the infringer has many advantages:
- Issuing a Cease-and-Desist Notice may serve as a quicker route to inform the infringer of the infringement of your rights.
- It is also a cost-effective way to resolve the issue of infringement/ passing off amicably, before opting for litigation.
- Issuing a Cease-and-Desist Notice helps establish that the owner of trademark was pro- active in taking action against trademark infringement/ passing off.
- If the infringer does not respond to the Notice and continues the infringement, the IP holder can show the mala fide intention and wilful infringement by the infringer.
PREREQUISITES
Every Cease-and-Desist Notice must include the following contents:
- The particulars of the party issuing the Notice;
- The claim of infringement and/or passing off of the issuing party;
- Description and proof of the infringed trademark;
- Request to stop infringing activity;
- Description and proof of the infringed trademark;
- Payment of damages or settlement amount; and
- Consequences of non-compliance of the Cease-and-Desist Notice.
RESPONSE TO CEASE & DESIST NOTICE
If one receives 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, submissions, denials, comments to the Cease & Desist notice should be drafted. Also, various grounds can be used to counter allegations that seem to be baseless. This will be helpful during subsequent legal proceedings if the need arises.
FAQS
No, a Cease-and-Desist Notice is not a legal notice. A legal notice is served by one party to another party when it is instituting a suit against the other party. However, a Cease & Desist Notice serves to inform the infringer of the infringement and requests them to stop the infringement.
A Cease-and-Desist Notice can be issued to an infringer through a registered email or a certified email. This is done so that the issuing party has proof of issuing a cease-and-desist notice to the party, if they chose to take legal action.
A Cease-and-Desist Notice must be sent to the official email or the registered address of the infringer.
It is not a legal requirement to send a Cease-and-Desist Notice to an infringer. However, it is always advised to send it, as it shows that the trademark holder was pro-active in taking timely action against infringement of their trademark.
No, sending a Cease-and-Desist Notice is not required by law.
Sending a Cease-and-Desist Notice serves two purposes:
- It may compel the infringer to stop the infringing activity, and the issue would be resolved, or
- It serves as a proof that the trademark holder was pro-active in notifying the infringer and stopping the infringing activity.
If the infringer does not reply to the Cease-and-Desist Notice, the trademark proprietor can take the legal recourse, and file an infringement suit and/or suit for action of passing off against the infringer.