Unregistered Trade Mark Cease & Desist Letter

This Unregistered Trade Mark Cease and Desist Letter is designed as a first step where another party is alleged to be infringing an unregistered 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.

Passing off and unregistered trade mark infringement

Unregistered trade marks are protected through the common law action of passing off. The letter should set out the mark relied on, the goodwill and reputation attached to it, and details of the alleged passing off.

Supporting evidence may include 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.

Important legal point: use only for unregistered trade mark claims

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

Due to the risk of threats actions against would-be IP claimants, this letter should not be used for any matter other than an unregistered trade mark.

There is no threats action relating directly to passing off, but there is for registered trade marks, designs and patents. If the position is unclear, uncertain, or involves multiple IP rights, legal advice should be sought before taking any steps.

Undertakings, information and compensation for passing off

Once the mark, goodwill, reputation and alleged passing off have been set out, the letter requires a series of undertakings from the alleged infringer.

These include a request for information to help calculate sums that may be due for the passing off, together with a further undertaking to pay those sums.

• In some cases, a full account of profits may be desirable.
• For lesser passing off, a smaller agreed sum may help conclude matters quickly and amicably.

Where there is doubt or disagreement, proper legal advice is vital.

Unregistered Trade Mark Cease & Desist Letter is part of Business . Just £38.50 + VAT provides unlimited downloads from Business for 1 year.