Why use a cease and desist letter?
To help ensure that the infringing party complies with your request, it’s important to give plenty of details relating to your IP right, the work in which it exists, and the alleged infringement. Using a Cease and desist letter for IP infringement may help avoid unnecessary costs and delays associated with bringing formal proceedings for IP infringement.
When can you use a cease and desist letter?
Copyright infringement
When a party copies all or a substantial part of your work either to create another published work or to reproduce and distribute your original work without your consent, you can claim copyright infringement. If only part of your work is copied, you must set out the key similarities between the works.
Trade mark infringement
When a party uses an identical or similar trade mark to your registered trade mark for identical or similar goods and/or services which is likely to confuse the public about the source of the goods and/or services, you can claim trade mark infringement.
When a party uses your unregistered trade mark without your consent and benefits from your company’s goodwill or reputation, you can claim infringement under the common law tort of passing off. To successfully claim for passing off you must prove that the mark is yours, that you have a reputation in the mark, and that this reputation has been damaged by the other party using the mark.
Patent infringement
When a party exploits your patented product or process without your consent, you can claim patent infringement. Exploitation involves the manufacturing, using, selling or importing of your patented product or process.
Design infringement
When a party makes, offers, puts on the market, imports or exports your registered design, or stocks the product incorporating your registered design for commercial use, you can claim design infringement. This is enforceable against the shape of a product, a two-dimensional surface pattern or graphic design, or a combination of the two. It’s not necessary to prove that the party intentionally copied your design or came up with it independently. The fact that your design is registered will be enough to establish infringement.
Only when a party intentionally copies your unregistered design can you claim design infringement. Unlike registered designs, this is only enforceable against three-dimensional shapes.
Unauthorised disclosure of confidential information
You can claim infringement when, either in breach of a Confidentiality agreement (NDA) or in respect of information shared and confidential in nature, a party uses or discloses some or all of this information.
What remedies are available to you?
Basic remedies - Copyright, registered trade mark, registered design or patent infringement
You can request the party stop making the infringing item or any other products that breach your IP right. You can also request the party deliver for destruction any or all infringing items they possess or control. Similarly, you can require them to use reasonable means to recover all of the infringing items from purchasers and deliver these to you. Finally, you can request they provide you with a written undertaking that they’ll refrain from making the infringing item or any other products that breach your IP rights without your written consent.
The same remedies are available if your unregistered design is infringed but, because you must prove intentional copying on a three-dimensional shape, it is harder to prove infringement and so harder to secure remedies. The Intellectual Property Act 2014 introduced various changes in respect of defences and exceptions to the use of registered and unregistered designs which include a new defence to the infringement of designs where use of the design is for private, experimental or teaching purposes only; and third parties that are using an unregistered design in good faith will be allowed to continue to use that design should it be subsequently registered by another party and will be able to do so without fear of infringing the new registered design. For more information, Ask a lawyer
Additional copyright remedies
You can let the infringing party continue to use your work subject to them attaching credit to you for the infringing work. You can also request a license fee from them for their use of your work. This fee can take the form of a one-time licence fee for use of the work to date or a periodic licence fee for continued use of the work.
Additional registered trade mark remedies
When you’re claiming trade mark infringement for a registered mark you can request the infringer to withdraw any registration applications for their infringing trade mark. You can also request they withdraw any domain name registration applications. Finally, you can request they cancel or assign to you any domain names currently registered to them which incorporate your trade mark.
Unregistered trade mark remedies
Some unregistered trade marks will be protected under the common law tort of passing off. Remedies for passing off won’t protect the unregistered trade mark itself but the goodwill and reputation of the business.
Unauthorised disclosure of confidential information
You can request the infringing party stop using or disclosing any or all of the confidential information without your written consent. You can also require that they deliver to you any materials containing the confidential information. Finally, you can request a written undertaking that they’ll refrain from using or disclosing the confidential information and that they must get your written consent for future use or disclosure.
All these matters are covered in Rocket Lawyer’s Cease and desist letter for IP infringement.
For more information, read Remedies for intellectual property right infringement. If you require more information on coming to an agreement regarding the infringement of IP rights, read Reaching an agreement - intellectual property infringement.
