Most infringements in India end with a letter, not a suit. A well-drafted demand, sent to the right person with the right evidence attached, stops the majority of infringers who are careless rather than determined. But a letter is also a legal act with consequences: it puts the recipient on notice, it forecloses an ex parte order, and — if the claim is weak — it can be turned into a claim against the sender. This guide covers the drafting, the timing, and the risk.
Quick reference
| Purpose | Stop the infringement without a suit; fix the recipient with knowledge; create the record |
| Contents | The right and its proof; the infringement and its proof; what must stop and by when; the consequences |
| Send to | The infringer; not, without care, its customers or suppliers |
| Effects | The recipient may file a caveat, which ends the prospect of ex parte relief; the letter is evidence of knowledge for damages |
| The risk | Trademarks, copyright, patents and designs each let a person threatened with proceedings sue for a declaration, injunction and damages if the threat is unjustified |
| When not to send | Counterfeiting, piracy and cases where evidence or goods would vanish — file first |
What a letter does
Three things. It stops an infringer who did not know, did not think it mattered, or does not want a fight — which is most of them. It fixes the recipient with knowledge, so that from the date of the letter the infringement is knowing, the innocent-infringer defences fall away and damages run. And it creates the record a court will read: the plaintiff acted promptly, the defendant was told and carried on.
What it should say
- Who you are and what you own — the mark, work, patent or design, with registration numbers and copies of the certificates, or for unregistered rights the evidence of use and reputation
- What the recipient is doing — specific acts, products, dates and places, with the evidence: photographs, purchase invoices, screenshots, a comparison
- Why it infringes — briefly; the letter is not the plaint
- What must happen — stop the use, withdraw the goods, take down the content, transfer the domain, disclose quantities and sources, give a written undertaking — and by when
- What follows if it does not — proceedings for injunction, damages and costs, and criminal complaint where available
- A reservation of rights, and a statement that the letter is without prejudice to them
What it should not say: allegations that cannot be proved; threats of criminal action where none is available — there is no criminal offence for patent or design infringement; a demand for money as the price of silence; or anything that reads as an attempt to extort rather than enforce.
Who to send it to
The infringer. Where the infringer is a company, its registered office and the officer responsible. Where it is an online seller, the seller and, separately, the platform under its takedown procedure.
Letters to the infringer’s customers, distributors or retailers are where the groundless-threats risk is sharpest. They are effective — a retailer told that stock is infringing will often return it rather than argue — and for that reason every intellectual property statute lets a trader whose business is disrupted by unjustified threats sue the person who made them. A letter to third parties should be sent only where the case is strong, the letter is measured, and the sender is ready to prove infringement in court.
What sending it changes
Ex parte relief. A recipient who expects a suit files a caveat in the likely court, and the court will then hear it before making any order. The surprise on which ex parte injunctions and seizure orders depend is gone. For counterfeiting, piracy, and any case where goods, accounts or evidence would disappear on notice, the sequence is reversed: file the suit, obtain the ex parte order and the commissioner’s visit, and let the order be the first the defendant hears of it.
Mediation. For a suit above the commercial-courts threshold, the plaintiff must attempt mediation first unless urgent interim relief is genuinely contemplated. A letter followed by months of silence undermines any later claim of urgency. A letter followed by a mediation application, and then by a suit if mediation fails, is the sequence the courts expect in a non-urgent case.
Limitation and delay. A letter is evidence that the plaintiff knew. What the plaintiff did in the months after it will be examined at the interim hearing.
Groundless threats
Each statute has a provision. Under the Trade Marks Act, a person threatened with infringement proceedings — by circular, advertisement or otherwise — can sue for a declaration that the threats are unjustified, an injunction and damages, unless the sender proves that the acts complained of infringe a registered mark. The Copyright Act gives the same remedies, but the sender is protected if it begins infringement proceedings with due diligence after the threat. The Patents Act provides the remedy against any threat of patent proceedings, and the Designs Act applies the patent provision to registered designs. In each case a mere notification that a right exists is not a threat; a demand backed by a stated intention to sue is.
The provisions bite hardest where the letter went to third parties, where the right was invalid or expired, where the letter claimed more than the registration covered, or where the sender never followed through. A trademark owner writing to the trade on the strength of a registration that a rectification petition later removes, a patentee whose claims do not read on the product, a design proprietor whose registration had lapsed — each has been on the receiving end. The defence is to be right, and to say only what can be proved.
Responding to a letter
The recipient of a letter has choices too. Check the right — the registration, its scope, its validity, its owner, whether it has lapsed. Check the facts alleged. Consider a caveat in the likely courts. Reply, without admission, either undertaking to stop where the claim is good, or explaining why it is not, and asking for the evidence. And consider whether the letter is itself a groundless threat that founds a claim — particularly if it went to customers. Silence is the one response that is never right: it reads as an admission at the interim hearing.
Frequently asked questions
Should I send a cease-and-desist letter before suing for IP infringement in India? Usually, where the infringer is a legitimate business likely to comply and there is no risk of goods or evidence disappearing. Not where the case calls for an ex parte order and a seizure — counterfeiting, piracy, deliberate copying — where the suit should come first.
What should a cease-and-desist letter include? The right and proof of it, the infringing acts and proof of them, why they infringe, what must stop and by when, and the consequences of non-compliance. Nothing that cannot be proved, and no threat of remedies that do not exist.
What are groundless threats? Threats of infringement proceedings that turn out to be unjustified. Under the trademark, copyright, patent and design laws, a person aggrieved can sue the sender for a declaration, an injunction and damages, unless the sender proves infringement or, for copyright, follows the threat with proceedings pursued with due diligence.
Can I write to an infringer’s customers or distributors? Yes, but it is the highest-risk form of letter. Third parties whose trade is disrupted by unjustified threats can sue. Write to them only on a strong case, in measured terms, ready to prove infringement in court.
Does sending a letter prevent an ex parte injunction? In practice, often. The recipient can file a caveat, which entitles it to be heard before any order is made. Where surprise matters, file first.
What should I do if I receive a cease-and-desist letter? Verify the right and the facts, consider a caveat, and reply — undertaking to stop if the claim is good, or explaining why it is not and asking for the evidence. Do not ignore it.
Useful official resources
- IP India — public search — verify the registration relied on in a letter
See our related notes on interim injunctions, pre-litigation mediation and patent infringement and groundless threats.
Drafting a demand, or deciding how to answer one? Talk to us.