Unregistered Trade Mark Cease & Desist Letter

This Unregistered Trade Mark Cease and Desist Letter is as the first step to take when another party is infringing your unregistered trade mark. A cease and desist letter may also be referred to as a “letter of claim” or a “letter before action”. The role of a cease and desist letter is to put an infringer on notice that their activities are known and to seek to resolve the matter, ideally without costly and potentially time-consuming litigation.

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.

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.

Unregistered trade marks are protected using the common law action of passing off. There is no threats action relating directly to passing off but there is with respect to registered trade marks, 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.

You should set out details and evidence of the mark and the alleged passing off in this letter. It is important to strike a balance when doing so. Enough detail should be provided to support your allegation, but not so much that information is revealed that might place you at a disadvantage. Evidence of infringement can include specimens, photographs, marketing materials, and other documents.

Not only do you need to set out details of your mark, but also, for passing off, your goodwill and reputation. Once this has been established, along with the alleged infringement, a series of undertakings required of the alleged infringer is set out. The second of these is particularly important as it requires information from the infringer designed to enable you to calculate what sums may be due 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 vital.

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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