INTRODUCTION
Intellectual Property Right (“IPR”) infringement is as common as the common cold. Every third person is affected by it, knowingly or unknowingly. IP infringement is a grave issue that requires to be dealt with sternly to preserve the functionality and objective of the IPR industry. The legal remedies available for Ip infringement are numerous, with suing the infringer being the most known one. However, a more practical option is to issue a “Cease and Desist” kind of legal notice to the infringer.
What is a “Cease and Desist” letter?
In the literal sense “Cease and Desist” means to stop doing something immediately. Such types of letters are cautionary and sent to the alleged wrongdoer, suggesting legal action if the alleged offending activity is not stopped.
This option is usually sought in cases of defamation, libel, certain contract violation, but most commonly in matters relating to IP infringement. In cases of IP infringement, a cease and desist can be issued when there is a copyright, patent, trademark (registered as well unregistered), or design infringement and even cases of disclosure of confidential information. It is considered to be the first step in addressing IP infringement. The main purpose of this letter is to make known to the recipient the misconduct or infringement on his part and explain what actions might be taken if the notice is not paid heed to.
The Supreme Court in the case of Midas Hygiene Industries P. Ltd. and Anr. v. Sudhir Bhatia & Ors., 2004 (3) SCC 90, held that a cease and desist letter is an important tool to pronounce injunctions.
A Cease and desist letter is a form of a legal notice issued by an attorney, not a layman, to the infringer. They are legal, but the recipient has the discretion of ignoring the letter. Despite the cease and desist letter being non-binding, it is important in obliviating the defence taken by the infringer and clears the path for the affected. It helps establish the grievance of the plaintiff and in the event of continued non-compliance, it strengthens in establishing the mala fide intent of the infringer and provides a strong ground for instituting a lawsuit for infringement.
There is no format or fixed template of a cease and desist letter however there are few key points that must be kept in mind while drafting such a letter to get the point across clearly.
(i) The details of the IP being infringed.
(ii) The specific act of infringement undertaken by the infringer.
(iii) The act in which the IP owner wants the infringer to cease
(iv) A comparison showing the original and the infringed work.
(v) The relevant applicable IP laws and the provisions.
(vi) The date of such infringement and the location where the infringed IP was used (if applicable).
(vii) The time within which the infringer should stop the infringing activity or the use of the infringed work.
(viii) The time frame within which a reply to the letter must be sent if applicable.
(ix) The effect of non-compliance of the letter and the fact that legal action would be taken.
Following are the consequences of sending a cease and desist
(a) It contributes to establishing an IP holder’s right in his Intellectual Property
(b) It notifies the infringing party about the relevant laws and their provisions that grant the IP holder certain rights,
(c) It informs the infringer about the rights he has violated of the IP holder and the requisitions put forwards by the holder
(d) It acts as a warning to the infringer, regarding the strict legal course of action that might be opted in case of non-compliance with the notice
(e) Highlights the bona fide attempt of the IP holder to amicably settle the dispute without dragging it to Court. Given the rising importance of Alternate Dispute Resolution, a notice of such a nature is an important step in creating awareness.
(f) The IP holder’s right is protected against infringement by the same infringer in the future, as a precedent is set by sending this notice.
However, it must be kept in mind that not all is rainbow and sunshine with no dark side. Issuing a cease and desist does not guarantee a complete stoppage of the infringing acts by the alleged infringer.
In the event the infringer chooses to ignore the notice, the IP holder will be forced to look at other legal courses (including filing a lawsuit) to protect his IP and enforce his rights.
The infringer would be given advance notice of the intentions of the IP holder to enforce his rights. Thus, the infringer will be allowed to take precautions and prepare for subsequent actions.
The infringer might in turn file a suit against the IP holder on groundless threats of legal action.
CONCLUSION
IP infringement is a constant problem and a cease and desist letter is a simple, cost-effective and speedy way to combat such a nuisance. However, this is a legal step simply and does not guarantee the resolution of the dispute, but it is the ‘go-to’ tool as it may help avoid unnecessary costs and delay associated with litigation. Despite not being legally enforceable a cease and desist, the recipient must carefully evaluate it and understand the legal and financial implications it might have upon receiving such a letter. The time frame for either responding to the cease and desist or stopping the use of the alleged infringing work is usually fairly short, hence a lawyer must be contacted at the earliest rather than letting it slide.
In my opinion, to avoid receiving such a letter in the future, due diligence must be done at the very beginning, and preventive steps must be taken to reduce the chances. Furthermore, an investigation and proper research ought to be carried out to verify the likelihood of third-party conflicts.
REFERENCES
“What to Do If You Get a Cease and Desist Letter” (Heer Law2020) <https://www.heerlaw.com/cease-and-desist-letter>
“What Is a Cease and Desist Letter - Trade Mark Infringement - IP Theft” (Rocketlawyer.com2014) <https://www.rocketlawyer.com/gb/en/quick-guides/cease-and-desist-letters>
Rana, “Effects of Sending Cease and Desist Notices in Cases of IP Infringement” (Mondaq.com May 9, 2018) <https://www.mondaq.com/india/trademark/700068/effects-of-sending-cease-and-desist-notices-in-cases-of-ip-infringement>