Registered Trade Mark Cease & Desist Letter

This Registered Trade Mark Cease and Desist Letter is designed as a first step when enforcing rights in a registered trade mark.

Also known as a “letter of claim” or “letter before action”, it puts the alleged infringer on notice and seeks to resolve the matter without immediate litigation.

Choose a softer letter or a formal cease and desist demand

The template provides two approaches:

• a softer, informative version inviting the alleged infringer to discuss the matter; and
• a formal cease and desist version stating that the trade mark is being infringed and requiring undertakings.

Action should be taken promptly once the relevant facts are known, but caution is needed before making allegations or threats.

Important legal point: unjustified threats and primary trade mark infringement

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

The formal cease and desist option should not be used unless it is absolutely clear that primary infringement is taking place. This letter is designed for communicating with a primary infringer, not a secondary infringer.

Under section 21(1) of the Trade Marks Act 1994, the activities for which it is considered safe to threaten legal action are:

• applying the mark to goods or packaging;
• supplying services under the mark; and
• importing goods to which the mark has been applied, including goods where the mark has been applied to the packaging.

If there is any doubt, proper legal advice should be sought before contacting the alleged infringer.

Registered trade mark infringement under the Trade Marks Act 1994

The letter includes options for infringement under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994, covering:

• use of an identical mark with identical goods or services;
• use of an identical or similar mark with identical or similar goods or services; and
• cases where the owner’s mark has a reputation in the UK and the alleged infringer’s actions take unfair advantage of it or are detrimental to it.

Except in clear-cut section 10(1) cases, proper legal guidance is strongly advised where there is room for interpretation or doubt.

Evidence, undertakings and compensation for trade mark infringement

The letter should set out details and evidence of the alleged infringement, such as specimens, photographs, marketing materials or other documents.

The level of detail should be balanced: enough to support the allegation, but not so much that it could place you at a disadvantage.

The letter includes undertakings from the recipient, including a request for information to help calculate compensation and a further undertaking to pay sums due. Depending on the circumstances, this may involve a full account of profits or, for lesser infringement, a smaller agreed sum to conclude matters more quickly and amicably.

Where there is doubt or disagreement, proper legal advice is very important.

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