Procedure for Drafting Notice for Trademark Infringement – An Overview

In recent years Trademark Law has been developed in India, and it has become one of the most vital parts in the Law field as well as in businesses and producing products & services. However, along with safeguarding a registered Trademark, one should know the legal remedies in the case of Trademark Infringement. So, in this case, the first & vital thing that one should quickly proceed with is by drafting & sending a legal notice to the infringer. In this article, we will discuss some basic procedures for drafting notice for Trademark Infringement that one must know in such a pandemic time.

What is Trademark Infringement?

Before we discuss the basic procedure for drafting notice for Trademark Infringement, it is important to know about Trademark Infringement. Trademark Infringement is defined as the illegal use of a Trademark, and this can be in association with products or services and may lead to deception, confusion, or a misunderstanding regarding the actual company a product/service came from. The owners of Trademark can take legal action if they believe their marks are being violated. If Trademark Infringement is proven, a court decision can prevent a defendant from using the mark, and the owner may be awarded financial relief.

If all the registered Trademarks or brands are used in an illegal manner, it leads to infringement, but with transmission & assignment of the Trademark, the registered business or company, the usage of such Trademarks, then it doesn’t amount to Trademark Infringement. According to Section 37 & 38 of the Act, registered marks are transmissible & assignable, with/without the business goodwill. Even an unregistered Trademark may be transmitted & assigned with or without business goodwill, as per Section 39 of the Act. Hence, Trademark Law in India provides when the usage of a registered Trademark doesn’t amount to Trademark Infringement.

Remedies for Trademark Infringement

When a Trademark is infringed, then the Trademark owner has both the civil as well as criminal remedies available under the Trademark Act. Under the civil remedies, the owner or proprietor has the right to reach out to the court for an injunction order for preventing or stopping the usage of the Trademark by the infringer/violator, or damages can be claimed as the exclusive right of the Trademark owner have been infringed or for accounts & handling over the profits which the violator might have earned by using the owner’s registered Trademark.

Whereas under the criminal remedies, the infringer has to bear the penalty of Rs. 50,000/- to Rs. 2 lakhs or/and 6 months imprisonment, which can be extended to 3 years. Hence, the Act provides for the compensation such that the Trademark owner revives its stolen profits & reputation, which might have been hindered due to the quality of the replica products or services engaged or involved by the infringer’s Act of using the registered Trademark.

Out of all these remedies available to the owner of the Trademark by virtue of the Act, firstly, the registered owner must draft notice for Trademark Infringement and send it to the infringer for violating the owner’s exclusive right. If and only if by sending legal notice for Trademark Infringement, the infringer doesn’t stop using the registered mark, then only the path of court needs to be taken.

Need for Sending & Drafting Notice for Trademark Infringement

The basic state of mind of an ordinary person is to avoid approaching the courts due to the obstructions that come along with it. That’s why sending & drafting notice for Trademark Infringement should be adopted first while expressing the complaints to the infringer. The primary benefit of sending legal notice vis-à-vis going to court is that it saves time because usually, the infringer comes to know of legal complications & legal courses that may arise from continuing using such Trademark of another company which the violator might not be aware of. Along with saving time, it’s also cost-effective & resolves the matter politely.

As soon as the registered owner comes to know of the usage of Trademark illegally, the owner should send the legal notice to the infringer or violator. This will caution to stop using the registered Trademark and also simplify the results of not fulfilling the conditions listed by the Trademark owner.

Essentials Required for Drafting Notice for Trademark Infringement

The draft of the notice should be clearly written and structured. Each & every word in the draft should speak out the issues & damages that the violator/infringer has done to the business of the owner while using the registered Trademark without license or permission. There must be a clear or evident separation of the infringement details, cause of action, and the legal consequences or outcomes following the receiving of the legal notice by the infringer. The individual or owner whose Trademark has been violated has to consult a good lawyer specialising in IPR or Intellectual Property Right^[1], then only a practical way & options can be determined against the infringer, and a draft of legal notice for Trademark Infringement can be prepared. But, each & every business individual must know some basics of drafting notice for Trademark Infringement so that they can double-check the ingredients, the draft language and will then only have confidence in their lawyers.

The first and vital thing of drafting notice for Trademark Infringement is that it should be printed on the letterhead of the lawyer who is drafting it. The reason is that when the notice reads the legal notice & checks the letterhead with the name & address of the lawyer mentioned, and then the notice will take it seriously & know that by not following the conditions cited in the notice, there can be severe legal outcomes. Moreover, the date of sending notice and the name & address of the notice has to be mentioned, along with the subject of the legal notice. Furthermore, the following ingredients need to be included in the content part:

• The first requirement is to mention the name, address and all other details of the infringer mentioned in the notice for Trademark Infringement, like:
• The date when the infringement took place or when the Trademark owner came to know about such infringement;
• The facts illustrating the Trademark Infringement;
• The grievances or complaints due to such infringement
• Detailing the inconveniences caused to the registered Trademark owner.
• All the communications’ details that might have taken place between the infringer and the owner.
• The cause of action due to the Act of infringer should be clearly mentioned.
• The owner has to provide a time limit to the infringer or violator to respond to the said notice.
• The outcome of not replying by the said time should be mentioned in detail.
• The notice should be duly signed by the owner’s lawyer.

Conclusion

By owning a Trademark, we should prepare or ready ourselves for the legal consequences in the case of Trademark Infringement. Therefore, the first and vital aspect one needs to be prepared and know drafting notice for Trademark Infringement.

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