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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.

Trade Mark Infringement Process

Paypal infringement matter

Trade mark infringement is far more common than most business owners would expect. Brands that start developing a good reputation in the marketplace are often copied or imitated by other companies trying to capitalise on their growing goodwill. In this post, we will discuss what the trade mark infringement process involves and how a company can enforce their trade mark rights.

What is trade mark infringement?

If a company uses an identical or similar trade mark for the same set of goods or services to a registered trade mark, they are committing trade mark infringement. Due to the similarity, the trade mark can cause confusion in the public. Consumers might believe that the product or service being offered by the company bares a relation to the registered trade mark.

This can lead to a number of issues for the company with the registered trade mark. It can cause a decline in their sales. Their reputation can be affected if the similar product or service is of sub-par category thus being detrimental to a mark’s distinctive character leading to dilution of their trade mark.
A good example of trade mark infringement by an identical logo can be seen below

UNIQLO trade mark copy MINISO

When a trade mark has significant reputation, any same or similar mark will also be counted as an infringement regardless of what products or services are being sold. A company cannot use a similar sounding name or logo to a reputable trade mark.

How do you address trade mark infringement?

Once a clear case of trade mark infringement has been established, the company with the registered trade mark has to enforce its protection. This can be done in a number of ways which have been outlined below.


An often necessary step in most legal matters, mediation can be used to come to an agreeable settlement between two parties. It is a cheaper and quicker alternative to court action. The UK Intellectual Property Office (IPO) provides accredited mediation services covering a range of intellectual property rights.

Using Intellectual Property Enterprise Court (IPEC)

IPEC has been created to help small and medium-sized companies as well as individuals to resolve intellectual property (IP) issues in a more affordable manner. A trade mark infringement matter would be covered under the IPEC.

IPEC offers two procedures, which are listed below.

  • IPEC (Small Claims Track): Claims less than £10,000. No legal representation is required.
  • IPEC (Multi Track): Recoverable costs are cappeTraded at £50,000, while the value of damages claim is capped at a maximum of £500,000.

Any claim worth more than £500,000 in damages or lost profits will have to be taken to the High Court.

How would a trade mark infringement process be started?

If a company finds a clear case of trade mark infringement, it is recommended that they contact a trade mark attorney to discuss the matter. In doing so, they can learn what the steps will be in order to deal with the matter.

As a first step in stopping trade mark infringement, the infringer must be notified of the issue through a cease and desist letter. The purpose of this is to stop them from continuing the use of their trade mark and understand the consequences they can face as a result of this infringement.

Mediation services can be used at this point as well as an attempt made to amicable resolve the matter directly between the two parties. This is often requested before court action is taken and is seen as a positive step.

Once no resolution can be achieved either directly or through mediation. The next step is to escalate the matter in the court. This is time consuming and costly.
One of the most important aspects of trade mark infringement is gathering evidence of losses, damage to reputation or any other issues caused by it. This can be difficult, especially proving financial losses as a result of trade mark infringement. Some methods of quantifying losses are through researching website traffic, brand recognition online and obtaining company financial information, if possible.

The same applies for proving damages to reputation. If the infringer has received negative feedback and reviews publicly, it can be used to show damage to reputation.

If you were to come across a case of trade mark infringement, it would be best to start by contacting a trade mark attorney or intellectual property solicitor and then following the steps outlined above.

Protection under rules of ‘passing off’

Passing off law

It is often believed that the only way to effectively protect your company’s sign (name, slogan, logo, colour, shapes etc) is to obtain a trade mark registration. This might be true in most cases, but in others it is also or only possible to protect your sign through other intellectual property (IP) rights. Copyrights, unregistered designs and laws of unfair competition can potentially be used when another party is unlawfully using any of your signs.

In the UK, one form of protection that is often relied upon (sometimes in conjunction with claims for registered trade mark infringement) is the law of passing off, which is a common law right. Passing off is used to protect signs that cannot be registered for e.g. packaging, get-up or colours,  or signs that have not been registered but have acquired goodwill.

So what is passing off?

Passing off is defined as making false representation which is likely to make customers believe that a company’s goods or services are those of another. Usually, this happens when someone has copied someone else’s sign e.g. packaging, slogan, trade name… without getting permission, and uses it in a way that creates confusion amongst the public.

What are the passing off requirements?

In order to prove passing off, you will have to fulfil three essential requirements which were set in the Jif Lemon case:

  1. Goodwill: you have to establish that your goods or services have acquired goodwill. There is no particular definition of goodwill in relation to passing off, however it has been described as “the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom”. Goodwill and reputation are often connected but goodwill should not be confused with reputation. Goodwill isn’t built only because you are reputable in the country, but also from actively selling your goods and/or services in the country to acquire goodwill.
  2. Misrepresentation: you have to demonstrate that the public has been led or will likely be led to believe that the goods and services provided by the defendant are yours or have some association/connection to yours. The fact that the defendant has intentionally used your goodwill or not is irrelevant.
  3. Damage: you have to establish that you have suffered or will likely to suffer damage due to the misrepresentation.

Each passing off action is determined on its own individual facts, but they all require the fulfilment of the three above elements. If you do not manage to provide enough evidence to fulfil one of those requirements, your passing off claim will fail.

It is important to be aware of the fact that there exists an extended form of passing off which was established in the Advocaat case. In that case, five characteristics need to be present to bring a valid action for passing off in the extended form. Due to the relevancy of this article, this will not be explored in details but you  can visit this link to see if this form of passing off applies to you.

Who may use passing off?

You may assume that passing off can only be relied on by big established businesses, but that is not the case . Small and medium businesses should explore the possibility of seeking legal actions based on passing off. Such actions may be brought by any traders who can prove the existence of the three requirements mentioned: goodwill, misrepresentation and damage. The tricky part for the trader is to have enough evidence to show sufficient goodwill in a certain location or among a group of customers in the UK.

When use passing off?

Trade mark registrations are highly recommended to protect your brands, because generally it will be easier and be less costly to sue an infringer. However, when you cannot rely on a trade mark registration, passing off actions should always be considered.

Moreover, it provides protection for signs which have not been registered formally or which cannot get registered (some signs are not  in compliance with trade mark law for e.g. descriptive marks or get-up). As explained above, you may rely on the law of passing off for any signs or characteristics recognised by the public as being associated with any goods and services. If you believe you can prove the existence of the three elements of passing off, you should make a claim on that basis.

The downside of passing off

We have established that passing off actions should always be considered when facing unlawful use of your brand, especially when you have no registered rights. However, you have to be aware that passing off actions have to be brought before British courts, and this is very costly and time consuming. This is because a high amount of evidence has to be presented to prove passing off. When you are a small or medium sized business, this can be very damaging and often leave you defenseless. That is why, it is important to also register your trade mark and/or design when possible, to consider all your options and never exclude other actions that could be taken.

Should you need assistance in bringing an action of passing off or any other intellectual property matters, our legal experts are available anytime Monday to Friday 9am-5pm to discuss this further.