Me: Sir, I recently read about Trademark Caution Notices. I had certain questions about them. What they are and what do they mean?

(Dr. Dewan in his usual manner)

Sir: Go Ahead….

Me: Sir, first things first, what is a Trademark Caution Notice?

Sir: A Trademark Caution Notice is a common method of notifying to the general public that a mark is registered and that the client is the owner of the mark. It is an intimation to all in rem that the mark is registered and statutory rights have accrued in favour of the client.

Me: Sir, to whom is this notice sent?

Sir: The notice is generally published in newspapers digitally or physically. It is a notice in general and not addressed to a particular person. Hence it does not give rise to any counter proceedings of groundless threats. It is addressed to all persons: competitors, traders, consumers and members of the general public.

Me: Sir, are these notices accepted as evidence in the Courts in India?

Sir: Yes of course.  All Courts in India have accepted these as evidence in support of the trademark owner. A person who may be using or who may use the same or a similar mark in future cannot plead ignorance of the mark and its registration. This defense is not available to such a person. It therefore becomes an effective piece of evidence in litigation.

Me: But Sir, what is the need for a newspaper/ print publication when a digital publication is easier and less expensive?

Sir: Yes, you are right Shubham, print publication is definitely more expensive than digital publication but here we can be selective. The publication can be in a trade magazine and not necessarily in a general newspaper. Such trade magazines are generally less expensive and are circulated to a target audience. Further print publication is always dated, every magazine or a newspaper bears a date, such a date is important during litigation. Publications in the digital media are not so easily accepted in Courts. For establishing a notice published in the digital media an affidavit under 65 B of the Evidence Act has to be published with details of how the evidence was seen and downloaded using a particular machine and printed on a particular printer. This can become tedious for the trademark owner. Also digital evidence of use needs to be proven by date, time, and certificates of "eyeballs".  The trademark owner will have to prove this by the number of people who had an Indian IP address and who viewed the website on which the notice was published. So, you see, it is more difficult to establish evidence of use when such advertisement is in the digital form.

Whereas a notice in a newspaper/ print publication generally mentions the date of publication and this date itself is sufficient for posterity and nothing needs to be proven as the document speaks for itself.

Me: Okay, I got your point Sir, but why do we ask a Client to release such a Trademark Caution Notice?  I mean is it for proving use of the mark or is it a defense against future infringement or opposition actions?

Sir: Shubham, a caution notice is a valuable tool in an infringement action and is not just meant for proving use of the trademark unlike as in the US, there is no requirement in India, to prove that the mark was in use at the time of renewal.

However, a need for proving use of the mark may arise if an "interested" party applies for the cancellation of the mark on the ground of non-use.

Also, such caution notices are useful in case of future oppositions or infringements of the mark in India. Such a notice has also been recognized in opposition proceedings where the client wants to oppose a mark. It becomes unchallengeable evidence.

Me: If Trademark Caution Notices are so useful, why don’t we hear about them more often?

Sir:  Shubham, it may be because other Indian law firms that you may work with may not be so informed about this aspect and there is not much scope to earn legal fees in drafting a caution notice. We routinely inform all our clients of the availability of such a potential weapon in infringement and opposition proceedings. The co-ordination of publication does require considerable monitoring from our side and it is more in the nature of our social responsibility to the client rather than a matter of earning fees. It is of course upon the client to voluntarily accept this recommendation or not.

Me: Sir, which businesses do you feel are at high risk, if they don’t publish a Trademark Caution Notice?

Sir: Shubham, the business risk will depend upon the kind of business that a client has in India. If the business is minimum and the client does not expect any infringement in the future under this mark, the risk is minimum. However, if the client has significant potential for business in India and there is a possibility of some competitor or other person using the trademark then not publishing a notice may cause a business risk.

Me: Sir, why are Trademark Caution Notices more important, when it comes to infringement and violation in India?

Sir: Shubham, this is because the ground reality in India with respect to potential infringement or violation of a trademark is different from that in other countries like the US.

The digital media in India has not proliferated as much as in the US. Even the mindset of Judges and Trademark Examiners is more physical than digital. Therefore, psychologically, a physical notice has a greater impact than a digital one. I have often seen in litigation whether before the Trademark Authority or before the Court that the defendant pleads ignorance particularly in trans-border cases. The hearing authority does get carried away by the defense of ignorance of the trademark. Although recently, there has been a greater acceptance of digital use of the mark.

Me: But Sir, is not registration of the mark itself a prima facie proof of its validity in India?

Sir:  Yes, you are correct Shubham, once the mark is registered, a future infringer cannot plead ignorance because the mark is present on the Indian Trade Marks Register. Therefore, statutory infringement has taken place irrespective of the use of the mark by the client or knowledge of the infringer of such mark.

However, this becomes an issue at the end of the trial and not at the time of requesting discretionary relief such as a grant of an interim injunction or an award for penal damages. A notice becomes useful in these circumstances.

If there is an infringement, the client can still obtain an injunction of the third party’s infringing activity. But I cannot say the same for a prayer for an interim injunction or an ex-parte injunction at the initial stage in the absence of any concrete documentary evidence. The award of damages is of course very subjective.

Me: Sir my last question, what exact purpose does a Trademark Caution Notice serve?

Sir: Shubham, it communicates a subliminal message to the hearing authority that the client is very vigilant and diligent in protecting its mark and has taken the effort to communicate the knowledge of its trademark and its registration to the general public in India.

Me: Sir, that leads me to another question, and this would certainly be the last. Does a proprietor need to publish a Trademark Caution Notice only once or several times?

Sir:  Shubham, this again depends on the business of a client. If the business significant and potentially growing, we not only recommend a caution notice immediately after registration but also periodically and in different publications to take advantage of greater coverage.