Next Steps After Receiving a Trademark Cease and Desist Letter

Do not ignore the letter. Ignoring it can lead to a lawsuit, an injunction against your business, and liability for damages. The first step is to read the letter carefully to understand the specific allegations. Note the trademark registration number (if any), the goods or services covered, and the date by which you must respond (often 14–30 days).

Next, stop any new use of the disputed mark immediately. Do not destroy existing inventory, packaging, or marketing materials yet—your lawyer may need to document them. Gather all evidence of your own use of the mark, including dates of first use, sales figures, advertising expenses, and any registration or application you may have filed with the Indian Trade Marks Registry.

Finally, do not communicate with the sender directly. Any statement you make can be used against you. Instead, contact a trademark attorney who can review the letter and advise on your options. The Trade Marks Act, 1999 governs these disputes, and a lawyer can assess whether your use infringes a valid registered mark or whether you have a defence.

You need to compare your mark and the complainant’s mark for similarity in appearance, sound, and meaning. Under Section 29 of the Trade Marks Act, 1999, infringement occurs when you use a mark that is identical or deceptively similar to a registered trademark for identical or similar goods or services, and such use is likely to cause confusion.

Check the complainant’s registration certificate. If the mark is registered, note the class of goods or services. If your goods or services fall in a different class and there is no likelihood of confusion, you may have a strong defence. Also consider whether your use is descriptive, generic, or a fair use (e.g., using your own name or describing a characteristic of your product).

If you have been using the mark before the complainant’s registration date, you may have prior rights under common law or Section 34 of the Act, which protects prior users. However, this defence is not automatic—you must prove continuous use in a specific geographical area. A trademark attorney can help you assess these factors and determine the strength of your position.

You have three main options: comply, negotiate, or contest. Compliance means agreeing to stop using the mark and possibly signing a settlement agreement. This is the fastest and least expensive route, but it may require rebranding and losing any goodwill built around the mark.

Negotiation involves proposing a coexistence agreement. For example, you might agree to limit your use to a specific geographic area, a different class of goods, or a modified version of the mark. The complainant may also agree to a licence in exchange for a fee. This option works best when both parties have legitimate interests and the marks are not directly competing.

Contesting the letter means refusing to comply and asserting your rights. You may file a counter-notice, apply for cancellation of the complainant’s registration (if it was obtained in bad faith or is not being used), or initiate a rectification proceeding before the Intellectual Property Appellate Board (IPAB) or the Trade Marks Registry. This path is adversarial and can lead to litigation, so it should only be pursued with strong legal grounds and evidence.

Generally, no. Continuing use after receiving a cease and desist letter increases your risk of being found a wilful infringer, which can lead to higher damages and an injunction. However, if you have a credible defence and the letter is baseless, you may decide to continue use while seeking a declaratory judgment or filing a counterclaim.

If you are in negotiation, you can request a temporary licence or a standstill agreement from the complainant. This allows you to continue operations while discussions proceed. Without such an agreement, the complainant may seek an interim injunction from a civil court, which can halt your business activities immediately.

In practice, most businesses pause use of the disputed mark until the matter is resolved. If you have invested heavily in branding, consider transitioning to a backup mark as a precaution. Your attorney can advise on the specific risks based on the facts of your case and the jurisdiction of the court.

If you ignore the letter and the complainant files a trademark infringement suit, you will receive a court summons. You must file a written statement within 30 days, or the court may pass an ex parte decree against you. The court can grant an interim injunction restraining you from using the mark, which can shut down your business operations.

You may also be liable for damages, including the complainant’s lost profits, your own profits from the infringing use, and legal costs. In cases of flagrant infringement, the court can award punitive damages under Section 135 of the Trade Marks Act. Additionally, the court may order the seizure and destruction of infringing goods, packaging, and promotional materials.

A lawsuit is far more expensive and time-consuming than responding to the initial letter. Even if you ultimately win, the legal fees and business disruption can be significant. This is why early legal advice is critical—it can help you avoid litigation altogether or position you for a favourable settlement.

If you have received a trademark cease and desist letter, do not delay. Contact a trademark attorney who can review the letter, assess your options, and negotiate on your behalf. A prompt, professional response can often resolve the matter without litigation.

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