A Trademark is referred to as a brand or logo. A trademark is defined as a distinctive sign that identifies certain goods/services as those produced/provided by a specific person/enterprise. A trademark consists of the drawings, symbols, three-dimensional colours and also combination of colours. A trademark can be in the form of words, letters and numerals or the combination of the all the three. A trademark is used by the companies or traders or any firms to distinguish their goods or services from the other companies or traders or firm (who are competitors). It is often observed that the trademark is used by the consumer to make his choice while buying any goods or availing services as there are some expectations with the quality of that particular trademark. Any person who claims to be the owner of a trademark has a right to apply for the registration of its marks. The registration of a trademark shall be for ten years. The registration can be renewed after paying renewal fees. Hence, the trademark prevents other traders from deceiving the consumer.
A cease and desist notice is issued in an infringement case. Infringement is defined as the unauthorized use of a trademark. The unauthorized use of a trademark leads to confusion, deception or misunderstanding about the goods or services of the actual company. Infringer means someone who has violated the rights of an individual or an organization. The cease and desist notice must be sent through a registered post to the infringer(trader or company or firm or an individual) who has been committing an act of infringing the rights of the trademark holder. The cease and desist notice acts as a formal request to the infringer (receiver of such notice) to stop and not continue with the act of infringing the rights of the trademark holder (sender of such notice).
The cease and desist notice consists of a detailed description regarding the adverse effects faced by him due to trademark infringement and a timeline within which the receiver must stop or discontinue to use his trademark, etc. A cease and desist notice must also include the warning that if the infringer does not stop or discontinue his act of infringing the rights of the trademark holder, then it will result into the initiation of the legal proceedings against the infringer.
Effects of the Cease and Desist Notice
The effects of sending a cease and desist notice to the party who infringes the right of the trademark owners are as follows:
- The cease and desist notice establishes the rights of the trademark owners in his trademark.
- The cease and desist notice is served to the infringer to protect the rights of the trademark owners in future against the same infringer.
- The notice is served to the infringer with reference to the prevailing law that protects the trademark holder’s right.
- A bona fide attempt is established by the trademark owner to reach an amicable resolution by sending a cease and desist notice.
- The notice makes the infringer aware of the law that protects its trademark and also it enables to stop the usage of the trademark by the other party.
- The cease and desist notice sets as a precedent of the trademark holder who is enforcing his rights.
- The cease and desist notice states that the non-compliance of the request of the trademark owner will result in a stricter course of legal action and it may involve a legal proceeding.
Pest Control (India) Private Limited Vs Pest Control Innovative Private limited
CS (COMM) 258/2016
Delhi High Court- 2nd May 2017
The Pest Control (India) Private Limited had registered its trademark ‘PCI’ in the year 1984under Class 5. ‘PCI’ was not only the Trade name but also the Trademark, House Mark, Service Mark and Trading style since its formation. ‘PCI’ has also been duly registered as a Copyright because it qualifies as an original artistic work of the Pest Control (India) Private Limited. It is also considered as a well-known mark within the Trade Marks Act 1999.
In June 2013, it came to the knowledge of the Pest Control (India) Private limited that the Pest Control Innovative Private limited is using and providing services with an identical and deceptively similar trademark. On 5th June 2013, a cease and desist notice was sent by the Pest Control (India) Private Limited to the Pest Control Innovative Private limited. On 27th August 2013, a reply to the cease and desist notice was filed by the Pest Control Innovative Private limited denying the infringement activities.
The Pest Control (India) Private limited filed a case against the Pest Control Innovative Private limited for relief of permanent injunction, restraining the infringement of trademark, copyright, passing off, delivery up of goods, rendition of accounts of profits and damages of Rs.20,01,000/-. On 18th February 2014, an ex-parte ad-interim injunction was granted in favour of the Pest Control (India) Private limited against the Pest Control Innovative Private limited restraining them from using the Pest Control (India) Private limited’s registered trademark ‘PCI’ or any other deceptively similar trademark for its products. The Pest Control (India) Private limited proved that the Pest Control Innovative Private limited had copied their trademark and Copyright.
The Court granted a permanent injunction in favour of the Pest Control (India) Private Limited. The Pest Control Innovative Private limited was also directed to destroy all their goods and any other infringing material bearing the ‘PCI’ trademark or any other deceptively similar trademark. The Court awarded a sum of Rs. 15,00,000/- to the Pest Control (India) Private limited as damages. Hence, it was held that the use of an infringing trademark by the Pest Control Innovative Private limited had caused injury, loss and damage to the name, business goodwill and reputation of the Pest Control (India) Private Limited.
The cease and desist notice is considered to be one of the effective ways in which the matter can be settled amicably. Hence, before initiating any legal action, a cease and desist letter is issued so that the party does not continue to use the infringed trademark. If the infringer does not stop or discontinue to use the trademark of the owner, then the trademark owner initiates the legal proceedings against the infringer.If the trademark owners are of the opinion that their trademark has been infringed by any other person, then they can take legal action. If it is proved that the trademark has been infringed, then the Court can prevent the other party from using such trademark and can award monetary relief to the trademark owner. Hence, the cease and desist notice helps in preventing the infringer from continuing to violate the trademark of the trademark owner.