Unregistered Trade Mark Protection Cease and Desist Letter Template

Unregistered Trade Mark Cease & Desist Letter

BS.IP.EN.CD.03

This Unregistered Trade Mark Cease and Desist Letter (also known as a “letter of claim” or a “letter before action”) is designed for use as a first step when another party is infringing a trade mark that is not registered. The key value of a cease and desist letter is that it puts an infringer on notice that their activities are known and aims to resolve the matter without recourse to costly and potentially time-consuming litigation.

Due to the risk of threats actions being sought against would-be IP claimants, it is very important that this letter should not be used in relation to any matter other than an unregistered trade mark. The action detailed in this letter refers to the tort of passing off. There is no threats action relating directly to passing off, however there is with respect to registered trade marks, registered (and unregistered) designs, and patents. If the situation is in any way unclear or uncertain or involves multiple IP rights, legal advice should be sought before taking any steps.

When providing details and evidence of the mark and the alleged passing off, it is important to strike a balance: Enough detail should be provided to support the allegation, but not so much that information is revealed that would place the accuser at a disadvantage. Evidence of infringement may include – to name but a few examples - specimens, photographs, marketing materials and other documents.

Having set out the details of the mark owner’s goodwill and reputation and the alleged passing off, a series of undertakings required of the recipient is provided. Of these, the second requires information from the infringer designed to enable the accuser to calculate what sums may be due to them to compensate for the passing off (a subsequent undertaking requires the infringer to pay such sums). It is important to note that what is sought will vary depending upon the circumstances. In some cases, a full account of profits may be desirable. On the other hand, for lesser passing off, it may be preferable to agree upon a smaller sum in the interests of concluding matters quickly and amicably without resorting to further legal action. Once again, where there is any doubt or disagreement, seeking proper legal advice is urged.

Optional phrases / clauses are enclosed in square brackets. These should be read carefully and selected so as to be compatible with one another. Unused options should be removed from the document.

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