Trademark Infringement Notice

A formal cease-and-desist letter demanding that someone stop using a mark that infringes yours. It asserts your rights and is often the first, low-cost step against a copycat.

Many infringers stop on receiving a firm, well-grounded notice. Where they don't, it sets up further action like opposition, rectification or court proceedings.

Registration makes enforcement much stronger. Unregistered marks with strong use may have some rights, but registering first is advisable.

Screenshots, listings, photos or links showing the infringing use, plus your trademark details. We help assemble this.

We advise on escalation — opposition or rectification at the Registry, or civil action — based on the specifics.

Usually within a few days of assessing your rights and the infringement.

Yes, and there is a section for it. Section 142(1) of the Trade Marks Act, 1999 lets a person threatened with infringement proceedings — by circulars, advertisements or otherwise — sue for a declaration that the threats are unjustifiable, an injunction against continuing them, and any damages sustained, unless the person who threatened satisfies the court that the mark is registered and that the acts complained of do constitute infringement. Section 142(2) removes that exposure if you commence and prosecute an action against the person threatened with due diligence. That is exactly why we ground the notice in the limb of section 29 (or in passing off) that actually fits, before anything is sent.

No. The Trade Marks Act, 1999 nowhere requires, prescribes or even mentions one. The only precondition section 134(1) imposes is about forum — a suit for infringement, for any right in a registered mark, or for passing off cannot be instituted in a court inferior to a District Court. Section 135(2) goes the other way and expressly contemplates an ex parte injunction, which assumes the defendant has not been heard. A notice is a commercial and tactical choice, and it has one specific legal job: ending the defendant's innocence defence under section 135(3).

Section 135(3) says that notwithstanding section 135(1), a court shall not grant damages (other than nominal damages) or an account of profits where the defendant satisfies the court both that when he began using the mark he was unaware and had no reasonable ground for believing your mark was on the register, and that when he became aware of your right he forthwith ceased. Both limbs are needed and the burden is on him. A clear, dated notice destroys the first limb from the day it lands — which is the strongest practical argument for sending one. Note what survives the bar: injunction, delivery-up and nominal damages.

Passing off, not infringement. Section 27(1) says no person shall be entitled to institute any proceeding to prevent, or recover damages for, the infringement of an unregistered trade mark — but section 27(2) preserves rights of action for passing off and the remedies for it. Two things change in practice: you cannot rely on the section 29(3) presumption of confusion or on section 31(1) registration-as-prima-facie-validity, so you have to prove your reputation; and the convenient forum in section 134(2) is limited to clauses (a) and (b) of section 134(1), so it does not extend to a pure passing-off suit. Filing the application is usually the first move.

It can be, under section 29(4), but the test is demanding and conjunctive. The mark used must be identical with or similar to yours; it must be used on goods or services not similar to those you are registered for; and your registered mark must have a reputation in India, with the use being without due cause and taking unfair advantage of, or being detrimental to, the mark's distinctive character or repute. There is no likelihood-of-confusion requirement in 29(4) — but the reputation evidence has to be real, and it has to be Indian.

No, and this surprises people. Section 28(3) provides that where two or more persons are registered proprietors of identical or nearly resembling marks, the exclusive right shall not be deemed to have been acquired by any one of them as against any other merely by registration — each has the same rights against everyone else, but not against the other registrant. Section 30(2)(e) makes the same point from the defence side. If both marks are on the register, the route is rectification under section 57 or invalidity, not an infringement notice.

Section 30 is the main list: descriptive or indicative use of kind, quality, quantity, purpose, value, geographical origin or time of production; use outside the conditions and limitations on your registration; genuine goods put on the market by you or with your consent; use reasonably necessary to indicate that goods are adapted to or accessory to others; and use of their own registered mark. Then section 34 protects continuous prior use from a date earlier than your first use or your registration, whichever is earlier; and section 35 protects bona fide use of a person's own name or place of business. We check all of these before drafting, because they determine whether the notice is worth sending.

Only if the facts genuinely support it, and only accurately. Sections 103 and 104 are real offences — falsifying or falsely applying a trade mark, and selling or possessing for sale goods bearing a false mark or false trade description — and each carries imprisonment of not less than six months up to three years together with a fine of not less than ₹50,000 up to ₹2,00,000, with section 105 raising that on a second conviction. But they have their own ingredients, section 103 turns on the accused not proving he acted without intent to defraud, and section 104 provides innocence defences. Overstating criminal exposure in a notice is exactly the kind of thing section 142 is there to catch.

Not the counterfeiting offences. The Jan Vishwas (Amendment of Provisions) Act, 2023 omitted sections 106, 108 and 109, substituted section 107(2) with a monetary penalty, and inserted sections 112A and 112B creating an adjudication and appeal track. Sections 103, 104 and 105 were left intact, with their minimum sentences unchanged. The claim that trade mark offences were decriminalised is a half-reading of that amendment.

Not indefinitely. Section 33(1) provides that where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered later mark, being aware of that use, he is no longer entitled on the basis of that earlier mark to seek a declaration of invalidity or to oppose that use — unless the later registration was not applied for in good faith. Section 33(2) makes the bar reciprocal. Separately, the cheapest moment to stop a conflicting mark is the four-month opposition window under section 21(1), which is why we monitor the Journal.

An assessment of your rights and the infringement, the statutory limb it rests on and the defences we considered, the drafted notice, and guidance on the response.