Exploring the Concept of Cease and Desist Under Intellectual Property Law

Jahanvi Agarwal

Deepa Sharma

Intellectual Property, as the name says, is brought about by way of a person’s intellectual capacity thus making it unique and creative. Intellectual property includes Copyright, Patent, Trademark, Design which can be protected under respective intellectual property statutes and rules so as to make sure that they are not copied or misused. However, in certain situations, the idea behind such IP is copied, used, distributed without prior permission from the owner or the licensor which amounts to ‘infringement’. In such cases of infringement, there are number of remedies and alternatives open to the holder of IP1. One such rights vested with the IP holder is delivering a comprehensive Cease and Desist notice to the infringer.

What Exactly Is ‘Cease and Desist’?

To cease and desist in simple terms, is a warning given to a person to cease/stop doing something which is against the interests of law2. Example- ABC Apparels, a local clothing outlet uses and distributes clothes with a logo similar to a well-known clothing brand, XYZ thereby causing confusion among common people. The owner of the XYZ brand sends a cease and desist legal notice to ABC Apparels citing trademark infringement and the legal consequences of carrying on such business under the Trademarks Act, 1999. Thus, once ABC Apparels receives the said cease and desist legal notice from XYZ, it is crucial for ABC Apparels to cease/stop continuing the use of the trademark so registered so as to avoid confusion among common people.

Contents Of a Cease and Desist Legal Notice

Although the form of a legal notice and a cease and desist notice are quite similar, the contents differ. Let’s take the scenario of the above illustration and look at the vital contents to be incorporated in the cease and desist legal notice.

  1. Date: The cease and desist notice can be drafted under the letterhead of the attorney who is representing the IP holder. Cease and Desist notice, like a legal notice, should start with the date.
  2. Recipient’s Name and Address: The name of the recipient should be clearly mentioned along with their address. If the recipient is a business entity, the address of the registered office of such entity must be clearly stated.
  3. Subject: Once the address is mentioned, the subject of the notice must be clearly stated. (In our case, it could be ‘Cease and Desist Notice for infringement of registered trademark under the Trademarks Act, 1999).
  4. Subject is then followed by a formal salutation addressing the recipient.
  5. Body of the Notice: The Body of the cease and desist notice is typically divided into:
    a. A brief paragraph explaining the IP holder and the nature of business, the trademark’s details including the registration number of such trademark along with a statement clearly stating that it has come to the attention of the IP holder regarding the misuse of such registered trademark.
    b. A brief background stating the reputation of the IP holder and how the infringer’s acts and conduct are damaging the goodwill and reputation of the IP holder.
    c. Rights being violated: The notice should point out the violations on part of the infringer. For example, in this case, we can state the trademark infringement an passing off citing the applicable provisions of the Trademark Act, 1999.
    d. Demands/Remedies: This part of the notice should comprehensively state the demands/ remedies to be sought from the infringer. The first demand would start as ‘we urge you to immediately cease and desist from using any logo, mark or design that is deceptively similar to our registered trademark in your marketing or your apparels’.
    Other demands that could be sought include to stop the use and distribution of the products under the IP holder’s mark, seek a written declaration within certain time period stating that the infringer is complying with the notice, to destroy or remove the products which already have the marks of the IP holder. The IP holder can also seek compensation for the loss sustained from the infringer as per applicable laws.
    e. Legal Consequences: After citing the remedies/demands as above, the notice should comprise of the legal consequences that might occur if the infringer does not comply with the said demands/remedies within the time stipulated. This could be filing an injunction suit, filing criminal proceedings thereby seeking penalties under applicable laws.
  6. Advise to take the notice seriously: A statement should be made stating that the notice should be taken seriously in order to avoid future legal implications.
  7. The notice must be ended with the contact information of the attorney citing that the infringer can get in touch with the attorney to discuss the settlement terms and resolve the issue amicably.

Effects/Advantages of Cease and Desist Legal Notice

A cease and desist notice, as discussed above can be sent either prior to filing an IP lawsuit or as an alternative to the lawsuit. The following points precisely summarise the effects of sending such notice to the IP infringer3 :

  1. Most importantly, the cease and desist legal notice signify the rights of the IP holder.
  2. The notice serves as a brief outline regarding laws protecting the IP rights and the consequences of not complying with the laws.
  3. Enumerates the methods of resolving the issue amicably without stepping into the court of law.
  4. The notice protects the IP holder’s rights from the same infringer in future.

Disadvantages of Cease and Desist Legal Notice

  1. The infringer may easily ignore the notice and carry on the infringing activities thereby forcing the IP holder to file a lawsuit.
  2. It may give the infringer a chance to take precautions or prepare for subsequent enforcement actions.
  3. The infringer may sue the IP holder on the basis of threats of legal action from the IP holder.
  4. In case the IP holder fails to establish accurate evidence and is unsuccessful in proving his IP rights, it sets a bad precedent4.

In Midas Hygiene Industries Pvt. Ltd. and Anr. v. Sudhir Bhatia and Ors.5 the Hon’ble Supreme Court categorically held that a ‘Cease and Desist notice acts as a vital and useful document to pronounce injunctions.’ It was further stated that, Rule 75 of the Copyright Rules, 2013 deals with the contents of the “take down notice” which can be sent by the copyright owner to the infringer and thus it is advisable to first exhaust the remedies available before approaching the court.
Thus, it can be concluded that issuing a cease and desist legal notice is one of the cost effective and simple ways to combat IP infringement thereby acting as a potential to avoid IP litigation. However, such notice must be issued with thorough due diligence.

  1. Nilanshu Shekhar, Akanksha Anand, Rishabh Manocha, Legal Implication Of Cease & Desist Notice In India, kaanalysis.com (Dec. 17, 2024, 9:29 PM), https://kanalysis.com/legal-implications-cease-desist-india/.
  2. MERRIAM-WEBSTER DICTIONARY,https://www.merriam-webster.com/dictionary/cease%20and%20desist (last visited Dec. 18, 2024, 9:35 PM).
  3. S.S. Rana and Co. Advocates, Effects of Sending Cease And Desist Notices In Cases Of IP Infringement, Mondaq.com (Dec. 18, 2024. 10:03 PM), https://www.mondaq.com/india/trademark/700068/effects-of-sending-cease-and-desist-notices-in-cases-of-ip-infringement.
  4. Pritha Chatterjee, Cease and Desist Letter, ipthink-tank.com, (Dec. 18, 2024, 10:15 PM) https://www.ipthink-tank.com/post/cease-and-desist-letter.
  5. Midas Hygiene Industries Pvt. Ltd. and Anr. v. Sudhir Bhatia and Ors, (2004) 3 SCC 90.