The hidden dangers of sending trade mark cease and desist letters
I have been asked on several occasions whether we have a standard cease and desist letter to send to alleged infringers. The answer to this is no, for two main reasons. Firstly, each letter must be carefully drafted in order to meet the particular circumstances of the case. Secondly – and more importantly – there is an issue in that a letter which threatens infringement without being justified can end up with you being sued, instead of the alleged infringer.
The way in which this works for intellectual property rights in general is complex, and I’m only talking in outline here for trade marks. When a business obtains a registered trade mark, it is given an exclusive right to use that mark in that particular territory. This means that the proprietor is given the right to prevent others using that mark, or a similar mark, for the goods and services for which it is registered. This is a strong monopoly right. As long as the business has that trade mark, it can be enforced it against others. It doesn’t matter if an alleged infringer has never heard of the mark before, or never come across it online. As long as it is registered, the proprietor can stop other parties using it in the course of trade.
As these rights are so strong, the law puts a check on them to prevent overzealous or manipulative rights holders trying to enforce them, when they have no right to do so. Otherwise, companies could go around threatening rival businesses in order to stifle competition. If it were that easy to write and send a letter threatening litigation, those on the receiving end of such letters would change the way they operate for fear of being sued. As a result, the law says that where a party issues unjustified threats of trade mark infringement, the receiver of the threat can subsequently sue them.
Now the threats laws have evolved over the years and are even under reform at the current time. Such piecemeal evolution resulted in a complicated web of provisions that the sender of a cease and desist letter must pick through carefully, in order to emerge unscathed. Even the trade mark attorney who writes the letter may be sued if the threat is unjustified. Historically not even the professionals have always got it right; I told you this stuff was complicated!
You will therefore find that there is no such thing as a standard cease and desist letter, and that such letters should always be drafted with a good knowledge of the law on threats. Your trade mark attorney will carefully draft such a letter which is appropriate in all the circumstances, ensuring that any unwanted repercussions are well avoided.BACK TO NEWS & OPINION