It is of paramount importance to exercise caution before sending cease and desist notice or initiating legal proceedings. The Trademarks Act, 1999 has provisions to safeguard people from what is popularly known as “TRADEMARK BULLYING.” This phenomenon is slowly catching up in India and already some big companies are busy in sending legal notices to the smaller ones. One needs to know the shielding, Indian law provides such vulnerable small entities.
It is of paramount importance to exercise caution before sending cease and desist notice or initiating legal proceedings. The Trademarks Act, 1999 has provisions to safeguard people from what is popularly known as “TRADEMARK BULLYING.” This phenomenon is slowly catching up in India and already some big companies are busy in sending legal notices to the smaller ones. One needs to know the shielding, Indian law provides such vulnerable small entities.
USPTO defines the trademark bullying as “the act where the trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow”.
In India, such provision is mentioned in Section 142 of the Trademark Act, 1999. It mentions the law against groundless threats of legal proceedings.
It mentions that when a person by means of circulars, advertisements or otherwise threatens another person with an action or proceeding for infringement of a registered trademark or alleged to be a registered trademark; the aggrieved person may bring a suit against such person and obtain a declaration to the extent that such threats are unjustified.
The aggrieved party can get an injunction in his favor to restrain the other person from the continuance of such threats and may also recover damages.
But legal practitioners and agents, who do the act on behalf of their client due to their professional capacity, are exempt from this liability.
This provision even extends to the protection against the threats from those who don’t claim to be the proprietor, licensee, assignee or a registered user of the registered trademark. Such suit related to the groundless threats of legal proceedings shall not be instituted in any court inferior to a district court.
It is generally observed that most of the times these infringement proceedings are initiated by the large companies to harass smaller companies. These small companies do not have adequate funds to continue long legal battles with the giant companies and as a result, they give up the usage of the mark, of which they are legally entitled to. The provisions under Section 142 of the Trademarks Act, 1999 are there to safeguard the rights of all such small companies for such trademark bullying in India.
Similar provisions are also present under the Copyright Act, Patents Act, Designs Act and Geographical Indications of Goods (Registration and Protection) Act.