Legal Notice for Cease and Desist against using the Trademark/Brand Name

The term notice is derived from Latin word “notitia” which means “a being known” or a knowing is wide enough in legal circle to include a plaint filed in a suit. A notice is simply an information or warning or reminder of something registered in a writing form which holds legal value.

What is a Legal Notice?

A Legal Notice is a direct and definite statement served by one person or party one/ two to any contract/ agreement to another person or party two/ one calling upon to perform the duty which was forgone and became the reason for issuance of Legal Notice.

“At times, the purpose for serving a notice shall be as a matter of fact of precaution, with the view to amicably settle the issue.

Knowledge of Fact

Legal Notice marks to being into knowledge or acknowledge something known to the either of the parties to the contract or agreement which he/she may wantonly or un-wantonly be ignorant.

Types of Notice

• Statutory Notice
• Actual Notice
• Constructive or implied

Information of facts

A person is said to have notice of a fact when he actually knows that fact or when there is negligence, that he would have known it, or when information of the fact is given to or obtained by his/ her agent under the circumstances mentioned as per section 3 of Indian Trust Act, 1882.

Manner of serving of notice

Normally a notice is served by way of “Registered Post with Acknowledgement” due or by personal delivery after obtaining signature as in the case of summon by postal certificate.

Types of notices

There are various legal notices filed for/ under various Acts for not discharging duties. They are:

• Notice of Eviction
• Notice of Infringement
• Notice for Advance Hearing and etcetera.

Who can issue a notice?

A notice shall be served by the party himself or by his/ her advocate or agent.

Requirement of Notice

• The notice must have date and place
• According to S N Dutt Vs. Union of India – The notice must be given by a person who’s legally competent
• According to State of Bombay Vs. Dr N T Advani – The Notice should be addressed to the proper or competent person(s)
• The Provision of Law which it is given or any provision of contract or agreement must be mentioned in the notice.
• Name, address and description of the person giving notice should be specifically mentioned and in case of doing it through an advocate, the details of such person shall be mentioned.
• The notice must contain the facts in brief, cause of action and relief claimed.
• Any notice calling upon the party to show cause must prescribe the time and place of hearing.

Meaning and format of Legal Notice for Trademark Infringement in India

Trademark –

A trademark is a visual representation attached to the goods for the purpose of indicating their trade origin.

• Trademark must be a mark which includes a device, brand, heading or any other graphical representation.
• It must be capable of distinguish the goods or services of one person from those of other.
• It includes shape, colour, packing et cetra.

Legal Notice Format

BY SPAD

To,                                                                                                                          Date

Dear Mam/Sir,

Sub: Cease and Desist against using the Trademark/Brand Name “(name of the infringed trademark”

THE DETAILS OF THE CLIENT AND ADVOCATE

I write under instructions from and on behalf of my Client, ______________, Single Firm/ company/ individual, having its place of business at ___________ (hereinafter referred to as “my Client” which term shall include its successors in business, interest, and or title, or subsidiary and group companies) and address you as follows:

BRIEF OF THE CASE

As you would be aware, my Client (when an advocate sends the notice) is the bonafide proprietor of the trademark/brand name (company’s name). My Client, with utmost honest intentions, had coined the trademark/brand name (company’s name) for business of (nature of the business) and bringing to knowledge that my Client has been using the said trademark for a long time for the brand name (company’s name).

At the outset, we would like to bring to your attention that my Client places great value on their legal rights and has been diligent in protecting the same. My Client is the prior adopter as well as bonafide user and proprietor of the trademark/brand name (infringed name) and the same is put forth in chronological order in the following paragraphs:

ADOPTION OF THE TRADEMARK/BRAND NAME:

It is pertinent to note that my Client is the prior adopter as well as user of the trademark/brand name (infringed company’s name).

LEGAL RIGHTS UNDER THE TRADE MARKS ACT, 1999:

My Client, fully aware of the legal and statutory rights and very well informed by her attorneys, have a brand name (infringed company’s name).

It is stated that my Client, in addition to being aware of the importance of having a trademark for their brand name (infringed company’s name), was also vigilant of their bonafide rights and interests and therefore, had conducted a Public Search for the mark (infringed company’s name) on the Trade Marks Registry before filing the trademark application.

My Client therefore wishes to establish her/ his proprietary and statutory rights over the trademark/brand name (company’s name) on the basis of the afore-mentioned.

CAUSE OF ACTION FOR THE NOTICE

However, my Client was shocked when they came across your brand name “(infringed company’s name)” (hereinafter referred to as the “impugned trademark”), which clearly is an exact imitation of my Client’s trademark/brand name (company’s name), and hence is an absolute infringement of my Client’s statutory and proprietary rights.

My Client wishes to state that the adoption of the impugned trademark is an apparent infringement of my Client’s statutory rights on the basis of the following legal grounds:

The impugned trademark is identical to the trademark/brand name in which my Client has rights-

My Client is the sole proprietor of the (company’s name) trademark. The impugned trademark name is identical and an exact imitation of my Client’s trademark (company’s name) in its entirety.

The impugned trademark has been used in bad faith-

My Client’s (company’s name) trademark/brand name is well- known for the quality established. My Client has expended substantial resources promoting and advertising my Client’s business. By using the impugned trademark, you are intentionally attempting to attract, for commercial gain, customers to the impugned trademark by creating a likelihood of confusion that it is affiliated or endorsed by my Client and subsequently redirecting them to your impugned trademark.

You are attempting to use the impugned trademark as a deceptive means to capture and redirect genuine customers by creating an impression that the impugned trademark is affiliated/ associated with my Client or endorsed by my Client.

Following these revelations, my Client is extremely concerned with the fact that when a genuine customer searches for my Client’s product (company’s name) they will be deceived by the impugned trademark and the same will cause a considerable number of my Client’s customer to assume that the impugned mark “(company’s name) is associated with my Client. In lieu of the same, my Client has lost and is losing a very large number of customers which in turn has and is adversely affecting their business.

My Client was forced to approach their legal attorney in the instance case due to the gross infringement of my Client’s rights that resulted in my Client suffering enormous monetary loss. My Client is strictly concerned about the loss suffered by him and is well acquainted with the legal rights he possesses and therefore my Client will not hesitate to invoke all legal remedies to claim compensation through the appropriate legal forum if he is forced to do so.

RELIEF CLAIMED 

In view of the above, my Client wishes to put you on notice of her legal rights and inform you that he does not intend to permit you to disregard your liabilities and accountability towards the loss suffered by my Client on account of the gross infringement and misrepresentation on your part. Accordingly, my Client has instructed us to write to you and to prevail upon you to forthwith:

• To cease and desist from using the trademark/brand name (infringed company’s name) and their respective logos and/or any other deceptively similar mark to my Client’s trademarks in relation to your trade name and/or any goods or services.
• To surrender to my Client the entire stock of packing and other materials bearing my Client’s (company’s name) marks;
• To withdraw all stock of materials bearing my Client’s (company’s name) marks;

CLASSIFICATION AND SECTION OF TRADEMARK ACT, 1999

• refrain from applying or acquiring, even in the future, any mark identical or deceptively and confusingly similar to my Client’s (company’s name) trademark/brand name in relation to your trade name and/or any goods or services and/or any other services related to Class ____ of the NICE Classification with reference to the Trademarks Act, 1999;
• provide an unconditional undertaking to my Client that you would not use, marketing, selling, manufacturing, importing and providing goods using my Client’s (company’s name) trademark/brand name in any manner whatsoever;

NOTICE CALLING UPON THE PARTY TO RESPOND IN TIME PERIOD AS MENTIONED IN THE NOTICE

My Client calls upon you to immediately act upon the requisitions stated above and compensate my Client for the loss suffered by my Client. Further, my Client states that the contents of this legal notice are without prejudice to the rights and remedies available to my Client under Civil, Criminal or any applicable law in force, and my Client reserves its rights to approach the appropriate legal forum to take necessary action against you and any party/parties that my Client deems to be associated with your negligent acts, in any manner whatsoever.

We look forward to hearing from you within fifteen (15) days hereof that you shall comply with all of the requisitions set herein above. We hope to have your co-operation and an amicable settlement. Further my Client reserves her right to initiate suitable legal action against you as they are best advised, without any further notice to you whatsoever.

Should you wish to discuss this matter, please feel free to contact at the email/ phone number as mentioned

Yours Sincerely,

Advocate