WHAT SHOULD I DO IF I RECEIVE A CEASE AND DESIST LETTER?
What is a cease and desist letter?
Trade mark litigation is almost always preceded by a “cease and desist” letter, or “letter before action”. Such correspondence generally sets out the rights of the owner, and instructs the other party in strongly worded terms to cease use of the trade mark complained of, while threatening actions for trade mark infringement and/or passing off.
The letter may demand that the recipient change their name, stop trading immediately, hand over all allegedly offending articles and promotional material, and can also include a request for damages. The consequences of non-compliance can be serious. As a result, it’s best to seek professional advice in order to determine whether the requests are justified, or whether they are unfounded and can be rejected.
Why has this happened to me?
You may have been trading in breach of someone else’s rights, either because they have a trade mark registration (trade mark infringement), or they have built up rights through their use of the mark (passing off), or both. You may have launched your product without making complete checks, such as conducting a full search of the relevant Trade Mark Registers.
What should I do?
- Cease and desist letters can be intimidating, but don’t panic. Read the letter carefully so that you understand exactly what it is they are saying.
- Note the date by which you have to respond, which will generally be within fourteen days.
- Get together all background information on your use of the trade mark, and/or your registration certificates. Based on your knowledge, consider the implications that the situation may have on your business, from a financial and personal viewpoint.
- Don’t stick your head in the sand. Seek advice from a registered trade mark attorney as soon as possible, to allow a response to be provided within the deadline given. An attorney will have expert knowledge in this specialist field of law. They will have seen many such letters, and without doubt written a few themselves! It could be that the letter is completely unwarranted, or that the sender of the letter has wrongly threatened you with trade mark infringement. If so, you may be in a position to instead take action against them.
- Don’t reply to the sender of the letter yourself. You may consider the letter to be over the top, but don’t post it on social media. This could harm your position down the line.
- When you see your trade mark attorney, explain the whole position. They will advise you of the strength of your case, and set out your options. They will tell you about risks and costs, so that you can make an informed choice whether you wish to be involved in a legal conflict and to what extent. A considered response will be drafted on your behalf.
- Where appropriate, negotiations can be undertaken with the other side to try and settle the matter. Many disputes result in settlement, which is far preferable to ending up in court.
- If the sender’s claims are legitimate, a settlement could, for example, state that you agree to change your name to one which is not confusingly similar to that of the other party, undertake to revise your trading style and get-up; and/or to transfer your domain name, if this contains the trade mark. Disputes can also be settled by the sender offering a trade mark licence, or franchise, allowing you to continue your business on specified terms.
If you have received a cease and desist letter, we can help you reach the right settlement for you.BACK TO NEWS & OPINION