In cases of IP infringement, be it with respect to trademarks, copyrights, patents or designs, a number of legal options are available to the IP holder to enforce their IP rights.
While the option to sue the infringer is always available, a more practical option is to issue a cease and desist legal notice to the infringer, inter alia, establishing the IP holder's rights in the IP being infringed and, on the basis thereof, calling upon the infringing party to cease and desist from all infringing activity and further is undertake never to repeat such infringing actions again, under notice of legal action in case of non-compliance.
In developing markets such as India, one of the most popular defences taken by IP infringers is ignorance of the law in respect of the matter and also lack of knowledge of the IP holder's rights in the impugned IP.
A cease and desist letter, therefore, sent prior to initiating a lawsuit helps obviate this defence being taken by the infringer and, in case of continued non-compliance, further helps in establishing the mala fides of the infringing party in case of a lawsuit on the grounds of infringement.
Briefly, the effects of sending a cease and desist legal notice to an infringer, whether prior to or as an alternative measure to, an infringement lawsuit are as follows:
- Establishes the IP holder's rights in his IP;
- Serves notice to the infringer regarding the prevalent law protecting the IP's holder's rights;
- Serves notice to the infringer regarding the IP holder's requisitions/demands;
- Serves notice to the infringer that non-compliance with the IP holder's requisitions/demands will constrain the IP holder to pursue other (stricter) courses of legal action, which may involve a lawsuit;
- Establishes the IP holder's bona fide attempt to reach an amicable resolution to the matter by making the infringer aware of the law as well as the IP holder's rights in his IP and giving the infringer an opportunity to cease all infringing (illegal) activities without unnecessarily escalating the matter;
- Serves to protect the IP holder's rights in future against the same infringer;
- Sets a precedent of the IP holder enforcing his rights.
Some of the primary advantages of issuing a cease and desist legal notice to an IP infringer are:
- If it results in compliance on the part of the infringer, then issuing a cease and desist legal notice proves a very cost-effective and simple way to combat IP infringement;
- Pro-active, yet amicable method of resolution;
- Helps ascertain the infringer's stand in the matter prior to pursuing any further (stricter) course of legal action, based on whether or not the infringer chooses to comply with the requisitions made in the notice;
- Less time and cost-intensive, as compared to contesting a lawsuit on the grounds of IP infringement.
- Establishes the IP holder's bona fide attempt to protect and enforce his IP rights;
- In case of non-compliance by the infringer, serves to establish the infringer's mala fide intentions in subsequent legal proceedings.
However, it is important to keep in mind that issuing a cease and desist legal notice does not guarantee a resolution or a cessation of the opposite party's infringing activities. Certain disadvantages of choosing to issue cease and desist letters instead of filing an infringement lawsuit are as follows:
- The infringer may simply choose to ignore the notice and continue infringing activities, in which case the IP holder will be forced to consider further (stricter) courses of legal action in order to successfully protect and enforce his IP rights;
- It may serve to give the infringer advance notice of the IP holder's intentions of enforcing his IP rights and thereby may help the infringer take precautions or prepare for subsequent enforcement actions;
- It may incite the infringer to file a suit against the IP holder on the basis of groundless threats of legal action, in which case the IP holder, to preserve his IP rights, shall be forced to consider instituting an infringement lawsuit;
- It is important for the IP right holder to react with due diligence by filing a lawsuit for enforcement of his rights. As in many cases the IP right holder pays no heed to the groundless threat because of which the suits are decided ex parte in the favour of the infringer.
- In case the IP holder fails to successfully enforce his IP rights against the infringer, could result in setting a negative precedent vis-à-vis future infringer.
In conclusion, based on an analysis of the nature and extent of any case of IP infringement, issuing a cease and desist legal notice can be a simple, cost-effective and expeditious option to combat infringement, and in any case, certainly serves as a useful pre-cursor to potential IP litigation.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.