Intellectual Property Cease and Desist Templates

December 2014

Cease and desist letters, when used with care, represent a valuable tool in resolving intellectual property disputes. It should always be the desire to settle matters without recourse to litigation and statutory remedies. By putting infringers (whether intentional or innocent) on notice that their infringement has been discovered, cease and desist letters can help to put a stop to the infringement of valuable intellectual property without the high costs associated with taking more formal legal action.

New and Updated Cease & Desist Templates

Our range of cease and desist letters has been comprehensively updated for December. All letters are now not only more detailed, but also contain additional provisions which make them more flexible, more open, less accusatory and more informative.

The key new provisions in our letters for registered trade marks, registered designs and patents introduce the option to be used in cases where the IP owner may not be ready to make a direct accusation and is instead interested in informing the recipient that his or her IP exists and that, in light of the recipient’s activities, the IP owner feels that dialogue and investigation would be beneficial to all concerned. In addition to furthering the goal of resolving disputes before they even arise, this approach is also designed to be helpful where there is a risk of a threats action being taken against the sender of a cease and desist letter (see below).

In addition to our updated documents, an all-new cease and desist letter has been created for use in cases of passing off. Similar to the letter for use with unregistered trade marks (which also uses passing off as the means of taking action), this letter is written in slightly broader terms and can provide a useful tool when seeking to protect non-registered intellectual property. Further guidance on passing off and IP enforcement will follow this release in January 2015.

IP Threats Actions

Threats actions were originally designed to help prevent the situation whereby threats of IP infringement actions made against other parties pressured those parties into surrendering even if the IP right in question was invalid.

Simply informing the other party of the existence of one’s IP right does not constitute a threat; however such communications are construed narrowly. Great care is therefore required. This does not, however, mean that it is not possible to threaten proceedings for the alleged infringement of an IP right. The provisions exist to ensure that the law protects innocent parties, not actual infringers.

In the case of registered trade marks, IP owners can threaten proceedings if the other party applies the owner’s mark to goods (or their packaging), supplies services under the mark, or imports goods (or the packaging of those goods) bearing the mark. For registered designs, if the alleged infringer is “making or importing anything”, the threat of proceedings for the alleged infringement is not actionable. Finally, in the case of patents, it is permissible to threaten proceedings for alleged infringement if the alleged activity is the making or importing of a product for disposal or the using of a process.

The existence of threats actions, then, does not mean that one cannot begin with a cease and desist letter to protect one’s IP; however it is the case that caution must be taken. Unless it is absolutely clear that infringement is taking place at the hands of the alleged infringer, legal advice should be sought before taking any steps to contact the suspected infringer.

Threats actions do not apply to all forms of IP. Copyright has no related threats action, nor does the common law action of passing off (which can be used, for example, to protect unregistered trade marks). Care is still required, however, and cease and desist letters designed for copyright, unregistered trade marks and passing off should only be used in relation to those rights and/or actions. If the alleged infringement covers multiple IP rights, is in any way unclear or uncertain, legal advice should be taken before taking any steps.

The cease and desist letter is, as noted above, a valuable tool and when used correctly and cautiously, can assist all concerned in saving time and money – not to mention the considerable stress of legal action.

The contents of this Newsletter are for reference purposes only and do not constitute legal advice. Independent legal advice should be sought in relation to any specific legal matter.

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