Next Steps After Receiving an IP Infringement Notice

The first step is to not ignore the notice. Whether it arrives by email, registered post, or courier, treat it as a serious legal communication. Acknowledge receipt in writing within 48 hours, but do not admit liability or make any admissions of fact. Your initial response should be neutral — for example, "We have received your notice and are reviewing the matter."

Next, preserve all relevant records. This includes the notice itself, any correspondence with the sender, invoices, purchase orders, design documents, or licensing agreements related to the disputed IP. Do not delete emails, destroy drafts, or alter any files. Under the Copyright Act, 1957 and the Trade Marks Act, 1999, destruction of evidence can lead to adverse inferences in court proceedings.

Finally, check the limitation period. Under Section 135 of the Trade Marks Act, 1999, and Section 62 of the Copyright Act, 1957, the limitation for filing a suit is three years from the date the cause of action arises. If the notice relates to an older alleged infringement, the sender may be time-barred. However, do not rely on this without verifying the facts.

You must independently verify the registration status of the intellectual property rights (IPR) claimed. For trademarks, search the Indian Trade Marks Registry database at ipindia.gov.in. For copyrights, check the Copyright Office records. For patents, use the Patent Office database. A notice may claim rights that are expired, not registered in India, or not owned by the sender.

Check the scope of the registered IP. A trademark registration in Class 25 (clothing) does not cover software services. A patent claim must be for a product or process that falls within the patent's claims. If the IP is unregistered, such as passing off in trademarks or common law copyright, the sender must prove prior use and reputation. Under Section 27 of the Trade Marks Act, 1999, no action lies for infringement of an unregistered trademark, but passing off is still actionable.

Also verify the ownership chain. The sender must be the registered proprietor or an exclusive licensee. If the IP has been assigned, check if the assignment is recorded with the Registrar. Under Section 45 of the Copyright Act, 1957, assignments must be in writing and registered to be valid against third parties.

Several defences are available under Indian IP law. The most common is non-infringement — your product or service does not fall within the scope of the IP. For trademarks, compare the marks as a whole, considering phonetic, visual, and conceptual similarity. For copyright, the defence of independent creation applies if you can show you created the work without copying.

The defence of fair use applies under Section 52 of the Copyright Act, 1957. This includes use for research, criticism, review, or news reporting. For trademarks, descriptive use of a mark in good faith is not infringement under Section 30 of the Trade Marks Act, 1999. For patents, experimental use or use for regulatory approval may be exempt under Section 107A of the Patents Act, 1970.

Other defences include prior use (if you used the mark before the registered proprietor), acquiescence (if the IP owner knew of your use and did not object for a continuous period), and invalidity of the IP registration (if the registration was obtained fraudulently or lacks distinctiveness). Under Section 124 of the Trade Marks Act, 1999, you can apply to the court to stay the infringement suit while challenging the validity of the registration before the IPAB or Registrar.

Responding is mandatory, but negotiating a settlement is often the most cost-effective route. A well-drafted response can open discussions for a licensing agreement, coexistence arrangement, or phased withdrawal of the allegedly infringing product. Under Section 28 of the Trade Marks Act, 1999, a registered proprietor can grant licences, and the terms are negotiable.

However, do not negotiate without understanding your exposure. If the IP is strong and your infringement is clear, a settlement may be cheaper than litigation. If the IP is weak or your defence is strong, a firm denial may be appropriate. A typical settlement includes a cease-and-desist undertaking, payment of damages or a licence fee, and mutual releases.

If you decide to negotiate, put all terms in writing. A Memorandum of Understanding (MoU) or a settlement agreement should be drafted with care. Under the Indian Contract Act, 1872, a settlement is binding only if there is consideration, lawful object, and free consent. Avoid oral agreements.

Ignoring the notice can lead to escalation to legal proceedings. The IP owner may file a suit for infringement in a civil court with jurisdiction. Under Section 134 of the Trade Marks Act, 1999, and Section 62 of the Copyright Act, 1957, the suit can be filed in the court within whose jurisdiction the plaintiff resides or carries on business, which may be inconvenient for you.

The court may grant ex parte interim relief, such as an injunction, without hearing you. Under Order 39 of the Code of Civil Procedure, 1908, an injunction can restrain you from using the IP, selling products, or continuing business operations. This can cause significant disruption. The court may also order Anton Piller orders (search and seizure) or Mareva injunctions (freezing of assets) in exceptional cases.

Additionally, costs and damages can escalate. Under Section 135 of the Trade Marks Act, 1999, the court can award damages or an account of profits. In copyright cases, Section 55 of the Copyright Act, 1957, provides for damages and conversion damages. Ignoring the notice may also lead to a default judgment, making it harder to defend later.

Review the notice carefully, preserve all evidence, and verify the IP rights claimed. If the matter involves significant commercial exposure or complex legal issues, consult a qualified intellectual property lawyer who can assess your defences and guide you through negotiation or litigation.

---

This page provides preliminary information. It is not legal advice. For your matter, consult a qualified professional.