Intellectual property comes in many forms – both as specific rights such as
copyright, patents, and registered trade marks, and in the shape of common
law, such as the tort of passing off.
Whatever form your IP takes, protecting it is crucial and taking swift and
decisive action upon discovering infringement is an important first step.
This is where cease and desist letters (also known as “letters of claim” or
“letters before action”) come in.
A cease and desist letter serves as a first step that puts an infringer on
notice that their activities are known and – ideally – seeks to resolve the
matter without recourse to costly and time-consuming legal action.
As useful as cease and desist letters are, they should not be taken
lightly. In the case of some IP rights, namely patents, registered trade
marks, and designs, threats actions are available as a remedy to protect
businesses and individuals against the misuse of threats of IP infringement
actions which are made for purposes of intimidation or gaining an unfair
commercial advantage when there has in fact been no infringement.
That being said, the law does not seek to protect those who are guilty of
infringement, nor does it seek to restrict those whose IP rights actually
have been infringed.
The Intellectual Property (Unjustified Threats) Act 2017 sought to strike a
balance which allowed rights holders to protect their IP, while still
preventing abuse of the system in order to distort competition or stifle
An action for unjustified threats is not available where the threat in
question relates to an allegedly infringing primary act. A ‘primary act’
is, in essence, the top-tier of IP infringement such as making a patented
product, using a patented process, using a trade mark for goods or service,
or making a product from a design. Those carrying out such acts will be
‘primary actors’ and, in general terms, these malcontents are fair game
whether they are actually carrying out the primary acts or whether they
merely intend to. Moreover, if a primary actor is also carrying out related
secondary acts (see below), they cannot bring an action for threats made
against them that refer to those secondary acts.
Less straightforward are ‘secondary actors’. While a primary actor is one
that is directly infringing (or intending to infringe) your IP, thus
meaning that their culpability is quite clear, a secondary actor’s hands
may not be quite so dirty. A secondary actor may be, for example, a
retailer selling products made by a primary actor. Consequently, the law is
more protective. There are still circumstances under which it is
permissible to contact secondary actors; however, these are much more
restrictive and limited to ‘permitted purposes’ such as simply making
someone aware that your IP right exists, and seeking to discover who the
primary infringer is.
Reviewed and Updated Letter Templates
Our portfolio of IP cease and desist letters has now been reviewed in light
of the 2017 Act and current best practice to ensure ongoing compatibility
with the law. Where the letters relate to IP rights in respect to which a
threats action can be brought, we have retained our original approach of
offering two choices – one not accusing and simply seeking discussion, the
second accusing and demanding that the recipient “ceases and desists”.
Despite the clarifications in the 2017 Act, we recognise that some may
still prefer to discuss and ideally resolve disputes with informal
discussions without recourse to formal accusations and threats of legal
Other improvements to our letters include:
- More detailed information about the IP in question including the date of
registration (where applicable), whether the complaining party is the
original owner and, if they are not, when the IP was assigned to them.
- Prompts for more details regarding the discovery of the alleged
infringement, in particular the date it was discovered.
- In many cases, additional undertakings required of the alleged infringer.
The contents of this Newsletter are for reference purposes only and do not constitute
legal advice. Independent legal advice should be sought in relation to any specific