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Cease And Desist Letters For Trademark Infringement

Cease & desist letter for trade mark infringement

Trade mark infringement can be a serious matter which needs to be addressed as soon as it is discovered. Companies, or individuals, who infringe a trade mark do not often understand the legal implications of copying or using a mark without permission. On the other side, trade mark owners are also unaware of the process of stopping trade mark infringement. In this post, we will look at the first step taken to stop trade mark infringement. A Cease and Desist letter.

What is a Cease and Desist letter?

A Cease and Desist letter is a document which is served to an individual or business to request they cease from continuing a specific act. It also requires the offending party to correct and/or compensate the damage that has been done from an offensive act.

Cease and Desist doesn’t just apply to trade mark infringement. It is also used in cases of defamation, harassment and other forms of IP.

The letter serves to point out wrongdoing on the part of another person or entity with a legal justification. The letter is often used to end the wrongdoing which in the case of a trademark infringement would be copying or using a trademark unlawfully.

Is a Cease and Desist letter legally binding?

A Cease and Desist letter is not legally binding. It represents an opinion of a person, usually a trade mark attorney or intellectual property (IP) solicitor hired by the aggrieved person or party.

The letter isn’t an indication of court action being pursued, but is likely to be the next course of action if the letter doesn’t achieve its intended purpose.

Using a Cease and Desist letter in a trade mark infringement matter

If your trade mark is copied or used by someone else without permission, the matter needs to be investigated first to see if it is a case of trade mark infringement. Once established, the very first step is to send the letter to the alleged trade mark infrniger to stop the trade mark infringement. In many cases, this is often enough to stop the offending party.

The letter should include details of the trade mark. The name, logo or slogan. When the trade mark was filed, what class or classes it covers and the date you found the trade mark being unfairly used or copied. You should include all proof that you have found of the infringement to strengthen your case. Finally, the letter should include a section on what the offending party can do to rectify the situation.

Although a Cease and Desist letter can be written by anyone. It is more appropriate for a trade mark attorney or intellectual property (IP) solicitor to draft it because they have the knowledge and understanding of the area to make a more compelling case for infringement.

How to deal with a trade mark infringement threat

Dealing with a trade mark infrongement

Building a brand takes a lot of work.  After all the effort and hard labour you’ve put into creating your distinctive brand, it’s not pleasant to find out someone is using or manipulating the materials you’ve created. If you’ve registered a trade mark and someone is using it, or a deceptively similar mark, without your authorisation then they could be infringing upon your trade mark.

Identifying trade mark infringement

If you think that someone is using your trade mark in a way that is likely to confuse, deceive or mislead customers then you can start a trade mark infringement threat against them. To claim trade mark infringement, you have to prove the following:

  • that you have a valid trade mark registration that is legitimate and should be protected;
  • that a third party is infringing it and using it in trade;
  • and that the third party does not have consent to use the mark;

As these cases can be complicated, it is essential that you consult with a trade mark attorney before proceeding.

Using a Cease and Desist letter

If you do have a valid mark that ought to be protected, then the first port-of-call is normally to send carefully worded Cease and Desist letter (also known as a Letter of Claim or a Letter Before Action). This letter is designed to open communication and bring about an amicable settlement without the need for legal action.

The letter notifies the infringing party that you have a registered trade mark and insists that the third parties use of the trade mark stops. Alongside this letter, you can send a legally binding undertaking – a type of legal promise- which outlines the obligations of the third party not to commit any further infringing acts.

Unjustified trade mark infringement threats

If you have your solicitor send a Cease and Desist letter or Letter of Claim it must be very carefully worded so as to avoid unjustified threats of trade mark infringement. In the UK, if you file a trade mark infringement threat against a third party, but it is found to be wrongly alleged then you could be liable for making an ‘unjustified threat’.

In short, if you file for trade mark infringement against someone who turns out not to have infringed your trade mark you could make yourself liable! Any ‘aggrieved person’ could bring action against you for making a threat with no grounds. ‘Aggrieved person’ is a large and vague category, covering not only the person to whom the threat was given but anyone whose commercial interests might be affected. This could expand to include manufacturers or distributors. This particular piece of legislation is unique to the UK, and may change soon as the Unjustified Threats Bills is currently before Parliament, as of April 2016.

Lack of cooperation from trade mark infringer

If you’ve sent Letters of Claim, the party is continuing to infringe your trade mark and there is sufficient evidence of a breach then you can make a claim in the Chancery Division of the High Court (the Court of Session in Scotland), or the Intellectual Property and Enterprise Court (IPEC). An injunction can be obtained from either court to prevent the repetition of trade mark infringement.

Remedies for infringement of trade marks

Apart from a court injunction, there are a number of other remedies available. These include an inquiry into the damages caused or profits made by the trade mark infringer. Better known brands can order forcing the defendant to publicise the judgement through a publicity order. This is only necessary if there is a need for a supplementary deterrent and/or to contribute to public awareness about the infringement.

Court proceedings will ensure the infringer will cease trading and may have to pay compensation for damages if applicable. It is still possible (and indeed, often advisable) to reach a settlement before going to court.

Simplified Steps to Claiming Trade Mark Infringement

(Remember that settlement can occur at any point in these steps.)

  1. Identify the offending mark and check it is infringing your mark
  2. Check that your mark is valid and ought to be protected
  3. Send a Cease and Desist Letter
  4. Send a legally binding undertaking (optional)
  5. Issue a claim form to start civil proceedings (if no settlement is reached)
  6. Approach Trading Standards Officers (applies to criminal proceedings only for e.g. counterfeit products)
  7. Attend court and reach settlement
  8. If necessary, appeal against the court’s decision.

What to do if you’ve been issued with an infringement notice

If you’ve been served an infringement notice, arguing that your trade mark violates another party’s then you should contact a trade mark attorney immediately. You should check to ascertain whether your trade mark is in violation of anothers or not, and check the validities and expirations of all marks. If you have made a mistake, then it is best to come to an amicable agreement by liaising with the other party through your attorney.