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 Chilling Effects Clearinghouse > Protest, Parody and Criticism Sites > Notices > Global Indian Foundation — Cease and Desist Letter (NoticeID 33101, http://chillingeffects.org/N/33101) Printer-friendly version

Global Indian Foundation — Cease and Desist Letter

January 13, 2010

 

Sender Information:
Global Indian Foundation Singapore
Sent by:
[Private]


Singapore, 149253, Singapore

Recipient Information:




Singapore


Sent via: through courier
Re: Infringement of Intellectual Property rights of Global Indian Foundation Limited

Dear Sir

1. We act for the Global Indian Foundation Limited.

2. Our clients are the owners of the trade marks "Global Indian Foundation", "Global Indian International School" and "GIIS" ("the Trade Marks")

3. Our clients have through doing business in Singapore as the proprietors of the Global Indian International School ("the School"). through long extensive use, and other advertising and promotional activities in Singapore acquired a reputation and goodwill in Singapore as an educational establishment for the Indian expatriate community in Singapore, such that the terms "Global Indian Foundation" , "Global Indian International School" and "GIIS" are immediately associated with our clients exclusively. Furthermore, any such association immediately brings to mind the award-winning and high-quality of educational services provided to such a community by our clients that have been consistently enjoyed by the public in Singapore.

4. It has been established that you are operating a blog (at URL www.forabettergiis.blogspot.com) ("the Blog") purporting to represent the interests of some parents of children attending the School.

5. You have in your Blog without the authorisation or consent of our clients:

5.1 reproduced, and or facilitated the reproduction of, the entirety of some of our client's letters circulated strictly for the personal and private attention of parents of children attending the School;

5.2 used the Trade Marks in the masthead, in hyper-links and or in metatags in the Blog, thereby creating a false impression that our clients are connected with the Blog, this initial misrepresentation would only be clarified upon entering the Blog and after detailed reading of the postings in the Blog;

5.3 in any event made many references to our client's name and or to the Trade Marks within the Blog, much more than reasonably necessary than for the alleged purposes of your Blog.

Our clients believe that you are fully aware of such activities.

6. By reason of the aforesaid, you are :-

6.1 confusing the public by drawing online traffic to your Blog under
the false initial impression that your Blog is connected to or associated with our clients through such unauthorised use of the Trade
Marks when in fact it is not.

7. As a result of such unauthorised use, our clients have suffered
and would suffer damage to their goodwill and reputation in Singapore.

8. Our clients are entitled to commence legal proceedings against
you for such acts of passing off. However, our clients are prepared to refrain from the commencement of legal proceedings if you comply with the following:

8.1 that you forthwith cease and desist from advertising, displaying
or otherwise using our clients' name or the Trade Marks or any similar variation thereof in any manner anywhere within the Blog and you give an undertaking not to resume such activities in the future or at all; and

8.2 contribute towards our clients' costs and damages in a sum
to be agreed.

9. Please note that if you do not respond to the above demands
within 48 hours from the date of this letter, our clients will not hesitate to take any and all steps, actions and proceedings necessary to protect their rights.

10. For the avoidance of doubt, all our clients' rights against
you remain expressly reserved.

Yours faithfully

[private]

Cc: clients

 
FAQ: Questions and Answers

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Question: Can a trademark give someone rights in common words and letters?

Answer: Not all identifying names and phrases can be protected by trademarks. Protection depends on a mark's strength, which is determined by how it is categorized. There are four categories (in descending order of strength):

  1. arbitrary
  2. suggestive
  3. descriptive
  4. generic

An arbitrary mark receives the most protection since the name bears no relationship to the product -- it implies imagination and thought. Kodak is an example of an arbitrary mark because the name itself suggests no connection to film or camera equipment. We learn this association only after the name has been used and becomes associated with the source of that product. A descriptive mark receives protection if it has secondary meaning in consumers' minds. A generic mark rarely receives protection because it is naturally associated with something in consumers' minds. An ordinary description is not special enough to warrant protection. However, if consumers connect the mark and its source in a way that would not exist without the mark's use in commerce, then the mark can be protected.

Alphabet letters, initials, abbreviations and acronyms may be entitled to protection if they are so original that they constitute an arbitrary mark (e.g., NICAD for nickel cadium). Otherwise, they may be protected only if they had acquired a secondary meaning which means that consumers have come to recognize the mark and associate the goods with a particular manufacturer (e.g., IBM and BMW).


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Question: What is a trademark and why does it get special protection?

Answer: A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

Consumers reap the benefit when trademarks are protected. By preventing anyone but the actual mark owner from labeling goods with the mark, it helps prevent consumers getting cheated by shoddy knock-off imitators. It encourages mark owners to maintain quality goods so that customers will reward them by looking for their label as an indication of excellence. Consumers as well as mark owners benefit from trademark laws.

Trademark owners spend a lot of time, money, and effort to protect the distinctiveness of their trademark. Once trademarks have become diluted to the point where the general public no longer recognizes them as distinctly applying to a particular manufacturer, they lose their value to the trademark owner because they no longer attract customers to his particular goods. For example, ?aspirin? used to be the trademark of one particular manufacturer of synthesized acetylsalicylic acid, but is now used to generically describe that product regardless of who produces it. Trademarks owners must be vigilant to make sure that their trademarks rights are not being infringed and that their trademarks are not becoming diluted or generic.

The birth of the Internet and the use of character strings (domain names) to represent Internet addresses has presented trademark owners with a whole new set of problems. It is often too expensive to register every variation of a trademark in every top level domain. Therefore, trademark owners must make sure that the people who register domain names that are either the same as or confusingly similar to a trademark are not using the domain name in a way that infringes on the trademark. One way to ensure that the trademark owner will not lose its rights in the mark is to file a UDRP complaint so that the Panel can decide whether the domain was registered in order to take unfair advantage of the mark owner. The Panel may decide that the trademark owner was wrong and had nothing to worry about, but unless the trademark owner is vigilant and files the complaint, it may never know for sure whether its rights were being abused.


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Question: What is the bare minimum of trademark law that I have to understand to decipher this C&D?

Answer: Your opponent should say that your mark is causing consumer confusion or is likely to cause consumer confusion. Or it should mention it's famousness and complain of dilution or tarnishment. (If the C&D does not say this, then no trademark claim may actually exist, and you can rest assured that your opponent is engaging in scare tactics or has hired a highly incompetent attorney). A mark protects more than identical copying, it extends to anything that is confusingly similar, even if it isn't exactly the same.

Functioning in a quasi-magical talisman-like capacity, trademarks designate the source or quality of goods or services. For this reason, the law protects against confusion in the market place by ensuring that marks on the same or similar products or services are sufficiently different. The law also protects famous marks against dilution of value and tarnishment of the reputation of the goods or services on which it appears or the source of those products, regardless of any confusion.

You can roughly assess the validity of your opponent?s claim of confusion by classifying the marks involved. A trademark can fall into one of 5 categories. It can be: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic. Not all of these varieties of marks are entitled to the same level, or indeed any level, of trademark protection.

A fanciful mark is a mark someone made up; examples include KODAK or H?AGEN-DAZS. An arbitrary mark is a known term applied to a completely unrelated product or service; for instance, AMAZON.com for an online book-store cum one-stop shopping site or APPLE for computers. Fanciful and arbitrary marks are considered strong marks and garner substantial trademark protection.

A suggestive mark is one that hints at the product, but which requires an act of imagination to make the connection: COPPERTONE for sun tan lotion or PENGUIN for coolers or refrigerators are examples. Suggestive marks are also strong marks and receive protection.

A descriptive mark, predictably, describes the product: HOLIDAY INN describes a vacation hotel and FISH-FRI describes batter for frying fish. Descriptive marks do not receive any trademark protection unless their user has used them in commerce and has built up secondary meaning. "Secondary meaning" occurs when consumers identify the goods or services on which the descriptive term appears with a single source. In other words, if consumers know that HOLIDAY INN hotels are all affiliated with a single source, then the mark has secondary meaning and receives trademark protection.

Finally, generic marks simply designate the variety of goods involved: for example, "cola" used on soft drinks and "perfume" on perfume are both generic terms. Generic marks never receive any trademark protection; they are free for everybody to use. (Keep in mind, though, that "Cola" on a nightclub is arbitrary, and therefore receives protection).

If your opponent is complaining that you have used the word "bakery" for a bake shop or "car" for a car repair shop, then you can safely guess that the c & d is baseless. On the other hand, if your opponent is concerned about the fact that both of you use of the term "Sweet Pickles" on alpaca sweaters, then the c & d may have some merit.

There are a few more wrinkles as well. Some marks are word marks (text only) and others are design marks (images which may or may not include text). Design marks do not provide independent protectin for the text incorporated in the design. So if the mark is only a design mark, it doesn't prevent others from using the text so long as they don't copy the design elements.


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Question: What is trademark infringement?

Answer: Although different courts have different tests, the central concept is confusion in the marketplace. The law protects against consumer confusion by ensuring that the marks on the same or similar products or services are sufficiently different. A plaintiff in a trademark infringement case generally must prove 1) it possesses a valid mark; 2) that the defendant used the mark; 3) that the defendant used the mark in commerce, "in connection with the sale, offering for sale, distribution or advertising "of goods and services; and 4) that the defendant used the mark in a manner likely to confuse consumers.


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Question: Can linking be trademark infringement?

Answer: Trademark infringement is misuse of another's mark to cause consumer confusion about the source or sponsorship of goods or services. By contrast, many non-confusing uses of trademarks are fair and/or non-infringing. (See Trademark Topic.)

If website uses hyperlinks, like any other content, to mislead viewers into thinking the site is endorsed by someone whose trademark it uses, (e.g., "This page sponsored by MEGACORP, click here for more details"), the website might be found to infringe the trademark. A website merely linking to someone's web page, even if that page and its URL include a trademark (e.g., "We disagree with MEGACORP, click here to visit their homepage"), is unlikely to be trademark infringement.


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