Shubham: Sir, what is a Trademark Caution Notice?

 

 

Dr. Dewan: A trademark caution Notice is a Notice generally inserted by a trademark owner in Newspapers or magazines to inform the general public that its mark is registered and use by any other person of the mark without its authorisation will amount to infringement and will result in infringer becoming liable to civil as well as criminal action.

 

 

Shubham: Sir, who generally releases the caution Notice?

 

 

Dr. Dewan: The caution notice is generally released by the Trademark owner itself or by the attorney representing the owner. It is good practice to get it released by the attorney because it has a greater psychological impact on the readers and many newspapers insist on the Certificate from the attorney for releasing the Caution Notice.

 

 

Shubham: Sir, the most common question Client’s ask is what is the additional benefit for publishing a Caution Notice in a high-readership paper?

 

 

Dr Dewan: A high-readership paper reaches more readers and has been considered relevant during litigation by a Court. In recent times where readership has moved online, the significance of Caution Notices has diminished to a certain extent.

 

 

Shubham: Okay Sir, some clients also are not sure in which area should they release the Caution Notice?

 

 

Dr Dewan: Shubham, the Client must identify from their marketing department the areas where they have sizable dealers and significant number of consumers. Also, they need to identify the areas where there have been or there are counterfeiters and counterfeiting activities. The purpose of the Caution Notice is twofold- to alert customers about counterfeit products and to warn counterfeiters that the trademark owner is aware of their activities and is likely to initiate action against them. A Caution Notice also serves as prima facie evidence of use of use of the mark and can be useful in a non-use action. Still further, issuing of a Caution Notice is like a general warning to all counterfeiters and although it warns the counterfeiters it does not give rise to a defence in favour of the counterfeiters of acquiescence and latches. Therefore, it is particularly important to publish a caution notice in the territory in which a potential infringer may reside or do business and still particularly, in a jurisdiction a potential litigation is to be filed.

 

 

Shubham: Okay, Sir what difference does it make if a client publishes Trademark Caution Notice in a newspaper versus if he is marking the product with the ® symbol?

 

 

Dr Dewan: Shubham, marking an article with the ® symbol signifies the trademark attached to the article has been registered under the Indian Trademark law. It is like a general notification to all persons that a trademark owner’s mark is registered. It does not have the same effect as publication, although it has some subliminal marketing value in the eyes of customers. Publication generally bears a date and has evidentiary value. The owner cannot establish when the marking on the article took place.

 

 

Shubham: Sir, does the client need to publish the Caution Notice periodically?

 

 

Dr. Dewan: Publication of a Caution Notice is a one-time cost. It is a record of use of the trademark or a present and definite intention to use the mark. We recommend to Clients that publication of the Caution Notice at least once in a period of 5 years to partially satisfy the use requirement in Indian Trademarks Law.

 

 

Shubham: Sir, what would happen if a defendant pleads ignorance of the registration of a trademark?

 

 

RKD: Shubham, a Trademark Caution Notice is like a Notice to the general public including the defendant. Once the Plaintiff (Trademark Owner) produces the Caution Notice as part of evidence, the defendant’s plea and therefore defence of ignorance will generally be discarded. A Court may actually ask the defendant to prove his ignorance which is something very difficult to you. Shubham, once a trademark is accepted, it is published in the trademarks journal and is open to Opposition by any person. A caution Notice only reinforces the fact that the mark has gone through the publication process and was not objected to by anybody and was thereafter registered. This may even act as an estoppel to ignorance of the registration of the mark. In my opinion, a Court may be inclined to grant increased damages in favour of a trademark owner who is vigilant and has taken the efforts to inform the general public about the registration of its trademark via a Trademark Caution Notice.