2017-10-07
Infringement is a term that businessmen and inventors generally dislike. This is especially true when you are being accused of intellectual property infringement. Receiving a trademark infringement letter can be an emotionally unsettling event. A trademark infringement letter, typically called a cease and desist letter, is a notice accusing you of infringement and demanding that you stop the infringing act.
When you receive a trademark infringement letter, a mix of emotions like anger, frustration, and fear are common. After all, you have invested effort and money into building your brand and the written notice has the potential to lead to a devastating situation. Within the turmoil, you may decide to call or email the representative of the other party to explain your defense. But, is it the right way to respond to trademark infringement letter? The answer: No.
Although scary, the notice is not legally binding and does not guarantee a lawsuit either. Acting on impulse could cost you more than you think. Before you respond to a trademark infringement letter, you need to consider certain factors.
Priority of Use
While registration of a trademark provides for exclusive rights, Canada is a first-to-use jurisdiction. This means that the priority of a trademark is given on the basis of first to use and not first to register. Determine who used the trademark first. You may find out that you are the first to use the mark. Although the other party has federal registration, the ‘first to use’ factor can benefit you. You may find that the other party has registered the mark, but you were the first to use it. It may turn out that while the other party has registration to their advantage, you may have been the first to use the mark. Furthermore, even if the party has mentioned the period since they started using the mark, it is best to verify it. Legal jargon such as ‘in use since as early as’ can be manipulated on the basis of defenses. Although it may be difficult to ascertain, consider who used the mark first to determine if prior use works to your advantage.
Whether or Not Infringement Exists
Infringement occurs when you use a mark that is the same or similar to a registered trademark for the same or similar goods or services. The existence of confusion is a vital component when proving infringement. Analyse the mark with that of the accusing party. Look at the spelling, connotation, appearance, etc of the mark. Also, check whether the goods and services represented by the mark are same, similar, or related to yours in some way. Apart from these, examine the trade and marketing channels, the location of operation, and the existence of relevant confusion. Analyzing these factors will help you determine whether or not there is infringement and figure out future actions.
Intent of the Accusing Party
There may be several reasons for a party to send a cease and desist letter enforcing trademark rights. A common one is that the accusing party may genuinely want to protect their rights. But, there are parties who use the cease and desist letter as a weapon to gain an unfair advantage in the market. They try to frighten trademark holders into achieving their purpose. Analyze factors like when the party came to know about infringement, when they decided to enforce their rights, and reasons behind the delay of enforcement of rights. These can help you strategically respond to the infringement letter.
While considering these points is crucial, being calm is equally vital as any rash action could be used against you. Do not delete important files, publish the letter on online media, or respond to the trademark infringement letter yourself as it can be used against you. Most importantly, consider speaking to a trademark agent to obtain guidance in responding to the notice. Their knowledge may prove valuable in such circumstances.
