This article has been written by Prachi Pranjli, pursuing the Certificate Course in Introduction to Legal Drafting: Contracts, Petitions, Opinions & Articles from LawSikho.
Table of Contents
Introduction
Trademark law in India has developed in recent years only and it has now become one of the most important areas in the field of law as well as in doing businesses and producing goods and services. It is one of the most sought after legal professions as well. However, along with protecting one’s registered trademark, one must also know the legal remedies in case of infringement of one’s trademark. Of all the remedies enlisted in the Trade Marks Act, 1999 (hereinafter referred to as “the Act”), the first and foremost thing that one should immediately proceed with, in case of trademark infringement, is by drafting and sending a legal notice to the infringer. Therefore, the author, through this article, wants to provide some basic procedure for drafting the legal notice for trademark infringement, that one should and must know in such a challenging time of Covid-19.
About Trademark and its Infringement
When we hear the name, Vistara, the famous airline in India, then we can instantly associate this brand name with Tata group. By hearing this brand name, we know how much this brand name has earned the reputation and goodwill till now. Likewise, there are so many symbols, phrases, brands, etc. that we see and use daily in our day-to-day lives, and while hearing these names or seeing these specific symbols, we know which company it represents. This is because all these marks, brand names, phrases are being used widely for years and have gained a reputation in the country as well as in foreign countries. Further, the registration of trademarks is done under Section 18 of the Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’) for the protection of the brands and therefore, no unregistered entity can use the trademark of registered entities, as this would amount to a violation of the owner’s rights.
In case an entity or individual uses the trademark of another registered entity, then this amounts to infringement of trademark under Section 29 of the Act. For this reason, no entity or individual can use such marks, brand names, phrases, etc. which can cause confusion to a reasonable person, for being deceptively similar to those products or services bearing such registered trademark. Also, such a trademark by the infringer must be used in an unauthorized manner during the course of regular trade where the registered entity is already engaged, then only it will amount to trademark infringement.
While all the registered trademark, if used in an unauthorized manner, amounts to infringement, but with assignment and transmission of the trademark by the registered entity, the use of such trademark does not amount to infringement. As per Sections 37 and 38 of the Act, registered trademarks are assignable and transmissible, with or without the goodwill of the business. Even an unregistered trademark may be assigned and transmitted with or without the goodwill of the business, according to section 39 of the Act. Thus, trademark law in India also provides when the usage of a registered trademark does not amount to infringement of the trademark.
Remedies for Trademark Infringement
When and if a trademark is infringed, the owner of the trademark has both the civil and criminal remedies available under the Act. Under the civil remedies, the owner has the right to reach out to the court for an injunction order for stopping the usage of the owner’s trademark by the infringer, or damages can be claimed as the owner’s exclusive right of using the trademark have been violated or for accounts and handing over the profits which the infringer might have earned by using the owner’s registered trademark. While under the criminal remedies, the infringer has to bear the penalty of fifty thousand rupees to two lakh rupees or/and imprisonment for a period of six months which can be extended to three years. Therefore, the Act clearly provides for the restitution such that the trademark owner revives its stolen profit and reputation, which might have hampered due to the quality of the duplicate goods or services engaged by the infringer’s act of using the owner’s registered trademark.
Out of all these civil and criminal remedies available to the owner of the registered trademark by virtue of the Act, firstly the owner of the registered trademark must send a legal notice to the infringer for violating the owner’s exclusive right. If and only if by sending the legal notice, the infringer does not stop using the registered trademark, then only the path of court needs to be taken.
By going through all such remedies, there are 2 points that need to be taken into consideration. One, when someone has in an unauthorized manner used the registered trademark of someone else for his/her business purpose, and second, where the owner of the trademark has assigned or transmitted the right to use the registered trademark of the owner. In the latter case, the owner does not have any action or remedy against the person using the registered trademark. While in the former case, the owner has remedies against the infringer for using the registered trademark without permission or license, enlisted in the Act.
The need for sending Legal Notice for trademark infringement
The basic mindset of a common person is to avoid approaching the courts due to the hassles that come along with it. That is why drafting and sending the legal notice should be first adopted while expressing the grievances to the infringer. The main advantage of sending legal notice vis-à-vis going to court is that it saves a lot of time because generally, the infringer comes to know of the legal complications and legal course that may arise from continuing using such trademark of another entity, which the infringer might not be aware of. Along with saving time, it is also cost-effective and resolves the matter amicably.
As soon as the owner of the registered trademark comes to know of the usage of the trademark unauthorizedly, the owner should send the legal notice of trademark infringement to the infringer straight away. This will caution the notice to stop using the owner’s trademark and also clarify the consequences of not fulfilling the conditions listed by the owner of the trademark.
Essentials of the Trademark Infringement Notice
The draft of the legal notice has to be very structured and clearly written. Each and every word in the draft should speak out the problems and damage that the infringer has done to the owner’s business while using the registered trademark without permission or license. There should be a clear demarcation of the details of infringement, cause of action, and the legal consequences following the receiving of the legal notice by the infringer. Of course, the owner or the person whose trademark has been infringed has to consult a good lawyer specializing in Intellectual Property law (IPR), then only a practical way and options can be figured out against the infringer, and a better draft of legal notice for trademark infringement can be prepared. However, each and every business person should know some basics of drafting the legal notice so that they can double-check the ingredients, the language of the draft and will then only have confidence in their lawyers.
The first and the most important thing of drafting a legal notice is that it should be printed on the letter-head of the lawyer who is drafting it. The reason is that, when the notice reads the legal notice and checks the letterhead with the lawyer’s name and address mentioned, then the notice will take it seriously and know that by not following the conditions mentioned in the notice, there can be serious legal consequences. Further, the proper date of sending the legal notice and, the name and address of the notice has to be mentioned, along with the subject of the legal notice. In furtherance, the following ingredients need to be incorporated in the content part:
- The first requirement is to mention the infringer’s name, address and all the details mentioning the infringement of the registered trademark, like:
- The date when the infringement took place or when the owner came to know about such infringement;
- The facts depicting the infringement;
- The grievances due to such infringement; and
- Detailing in-depth the inconveniences caused to the owner of the registered trademark.
- The details of all the communications that might have taken place between the owner and the infringer.
- The cause of action due to the infringer’s act should be clearly mentioned.
- The owner has to provide a time limit to the infringer to respond to the said legal notice, like in 15 or 20 days.
- The consequence of not replying by the said time limit should be mentioned in detail.
- The notice should be duly signed by the concerned lawyer of the owner.
Conclusion
The reason that the author has written the article on this topic of ‘Procedure of drafting the legal notice for trademark infringement’ is that during the lockdown due to COVID, we all were preparing ourselves to be more self-reliant or what our PM says ‘Aatmanirbhar Bharat’. By owning a trademark, or copyright, or patent, we should also prepare ourselves for the legal consequences in case of infringement of the same. Therefore, the first and foremost important aspect one needs to be armed with is, the know-how of drafting the legal notice in case of an infringement. We must strive to better our legal knowledge for our business purposes, such that we can double-check the drafts of the lawyers.
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