Registered Trade Mark Cease & Desist Letter
This Registered 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 enforcing intellectual property rights. If you or your business become aware that another party is infringing your trade mark, action should be taken quickly once you are in possession of all the relevant facts. 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. Caution, however, is advised (see below).
This Cease and Desist Letter template has recently been reviewed for compatibility with the Intellectual Property (Unjustified Threats) Act 2017 and has been updated to conform with current best practice.
This document is, in essence, two letters in one. The first option is designed for those who wish to take a softer approach. This option is designed to be informative rather than accusatory and invites the recipient to discuss the matter rather than requiring them to “cease and desist”. The second option is the more familiar cease and desist option, informing the recipient that they are infringing the sender’s trade mark and requiring them to comply with a series of undertakings.
When using the second option, great care should be taken. 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 taking any steps to contact the suspected infringer. Those activities for which it is considered safe to threaten a suspected infringer with legal action are, under section 21(1) of the Trade Marks Act 1994, the application of the mark to goods (or packaging), the supply of services under the mark, and the importation of goods to which the mark has been applied (or applied to the packaging thereof). Nevertheless, any doubts should be referred to a lawyer before making communication with the alleged infringer.
It is very important to note that this letter is designed for communicating with a primary infringer, not a secondary infringer.
When providing details and evidence of the alleged infringement, 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.
Options have been incorporated into this letter for three varieties of trade mark infringement (under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994 respectively): The use of an identical mark with identical goods or services; the use of an identical or similar mark with identical or similar goods or services; and situations in which the owner’s mark has a reputation in the UK and the infringer’s actions take unfair advantage of that mark or are detrimental to it. Once again, caution is advised, and in situations other than clear-cut infringement under section 10(1) (i.e. any situation where there is room for interpretation or doubt), proper legal guidance is strongly advised as the issues and interpretation surrounding the infringement can quickly become complex.
Having set out the details of the owner’s trade mark and the alleged infringement, a series of undertakings required of the recipient is provided. The second undertaking requires information from the infringer designed to enable the accuser to calculate what sums may be due to them to compensate for the infringement (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 infringement, 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 very important.
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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