Registered Design Cease & Desist Letter

This Registered Design Cease and Desist Letter is designed as a first step when enforcing registered design rights. Cease and desist letters are also known as letters of claim or letters before action.

It is intended for use where a business becomes aware of suspected registered design infringement and wants to put the alleged infringer on notice, with the aim of resolving the matter without costly and time-consuming litigation.

Choose a softer letter or a formal cease and desist approach

The template provides two different approaches, depending on the strength of the case and the tone the rights holder wants to take.

• the first option is softer and more informative, inviting the alleged infringer to discuss the matter rather than requiring them to cease and desist; and
• the second option takes the more familiar cease and desist route, alleging infringement and requiring the recipient to comply with undertakings.

The letter has been reviewed for compatibility with the Intellectual Property (Unjustified Threats) Act 2017 and updated to reflect current best practice.

Important legal point: primary infringement and unjustified threats

Great care should be taken when using the stronger cease and desist option. Unless it is absolutely clear that primary infringement is taking place, this template should not be used and proper legal advice should be sought before contacting the suspected infringer.

For registered designs, the activities for which it is considered safe to threaten legal action are “the making or importing of anything” under section 26(2A) of the Registered Designs Act 1949.

This letter is designed for communicating with a primary infringer, not a secondary infringer. Any doubt should be referred to a lawyer before making contact with the alleged infringer.

Evidence of registered design infringement

The letter allows the rights holder to set out details and evidence of the alleged infringement. The aim is to provide enough detail to support the allegation without revealing information that could place the rights holder at a disadvantage.

Evidence may include specimens, photographs, marketing materials and other documents.

Undertakings, information and compensation

After setting out details of the registered design and the alleged infringement, the letter includes undertakings required from the recipient. The conduct to be stopped should be confined to activities for which it is safe to make an accusation.

The undertakings also require information to help calculate what sums may be due as compensation. Depending on the circumstances, this may involve seeking a full account of profits or agreeing a smaller sum to conclude matters quickly and amicably.

Where there is any doubt or disagreement, proper legal advice should be sought.

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