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. Such letters generally set out the rights of the owner, and instruct 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 receiver change their name, cease trading, deliver up all offending articles and marketing material, and pay damages. Professional advice is required in order to determine whether the requests are justified, or whether the claims 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, generally it’s within 7 or 14 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.
- Seek advice from a registered trade mark attorney as soon as possible, and within the deadline given. An attorney will have expert knowledge in the specialist field of intellectual property. They will have seen many such letters, and without doubt written a few themselves! Don’t stick your head in the sand.
- 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 Facebook, Twitter, or elsewhere. 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.
- Negotiations can be undertaken with the other side to try and settle the matter. Most disputes result in settlement, which is of course far preferable to ending up in court.
Mediation is often an effective way of resolving trade mark disputes. It allows parties to talk about their dispute through a trained mediator who will aim to work out possible solutions, thereby reaching an agreement. A mediator acts as a neutral third party, and does not judge the merits of a case.
- 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; or take down your website. Disputes can also be settled by the sender offering a trade mark licence, or franchise, allowing you to continue your business on specified terms.
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