MAKE YOUR FREE Cease and Desist Letter for IP Infringement

Making your Cease and Desist Letter online is simple. Just answer a few questions and Rocket Lawyer will build your document for you. When you have all the information about the IP infringement prepared in advance, creating your document is a quick and easy process. 

You’ll need the following information: 

Party details

• Your details (including - if applicable - your business’ legal structure and your address).

• The infringer’s/recipient’s details (including their business’ legal structure - if applicable -  and their address).

Information about the IP infringement

• What type of IP right has been infringed?

• If the Letter regards copyright infringement: 

  • What type of work does the infringement concern (eg literary or musical)?

  • What is the copyrighted work called?

  • Who created it and when?

  • Was the work created by an employee of your business during their employment?

  • How was the work infringed (ie was it copied to create a new work, or replicated and distributed without permission)? 

    • If it’s been copied, is the new work identical or very similar? 

    • What’s the new (ie copied) work called?

  • What do you want the infringer to do?

• If the Letter regards infringement of a trade mark: 

  • What’s the trade mark’s name?

  • What is the trade mark owner’s name?

  • If it’s registered, what is its registration number?

  • If it’s unregistered, where has it been used (eg Scotland or England) and for how long?

  • What’s the name of the infringing trade mark (ie the mark being used that is overly similar or identical to yours)?

• If the Letter regards infringement of a registered design: 

  • What is the design’s name

  • What is the design’s owner’s name?

  • What is its registration number?

  • How is the recipient infringing your design right (eg by creating products with an extremely similar design)?

  • Will you include an image of the infringing design with your Letter?

• If the Letter regards infringement of patent rights:

  • What’s the patent’s owner’s name?

  • What is its patent number?

  • How is the recipient infringing your patent rights?

  • Will you include an image of the infringing patent or product with your Letter?

• If the Letter regards unauthorised disclosure of confidential information:

  • What confidential information did you share with the recipient (ie that which the infringement regards), when, and in what form (eg paper documents or emails)?

  • Why did you share the confidential information (eg to discuss a joint venture)?

  • How has the recipient used or disclosed the information in breach of your rights?

  • Was there an agreement governing your sharing of the information (eg a non-disclosure agreement)? If so: 

    • What was the agreement’s date?

    • Who were the parties?

Information about your correspondence 

• How long will you give the recipient to respond to your Letter before you take the matter further?

Cease and Desist Letters for IP infringement communicate information about the breach of IP rights that has occurred, as the vital first step towards stopping infringement. To do this, this Cease and Desist Letter template includes sections covering:

• identifying the IP that has been infringed - the ‘Re:’ line at the top of the Letter clarifies exactly which piece of IP your Letter concerns. The first section of the Letter then identifies the work and when it was created, how it’s protected (eg by the Copyright, Designs and Patents Act 1988), and explains that you own the rights to this IP (ie it’s your creation, you purchased the rights to it, or an employee created it under circumstances that grant you ownership of it)

  • if the IP in question is an unregistered trade mark, the Letter establishes the basis on which it is protected by explaining where and for how long you have been using the mark, and by explaining that the mark has acquired substantial reputation and goodwill for your brand. This would lead to an action for ‘passing off’ if your Cease and Desist Letter does not remedy the infringement. For more information, read Trade marks and passing off  

  • if your Letter concerns confidential information, it explains the basis on which the information should remain confidential and refers to any agreements in which the recipient agreed to confidentiality

• identifying the infringing IP - this section identifies exactly which creation of the recipient is being used in breach of your IP rights. If your Letter regards a trade mark, patent, or design right, this section refers the recipient to a schedule at the bottom of the Letter for more information on the IP in question

• the breach - the Letter then explains that, as the recipient did not gain your permission to use your IP in the manner that they’re using it, they are in breach of your IP rights. It explains why their use constitutes a breach (eg because their design is so similar it gives customers the same overall impression as your design, or because they agreed to keep your information confidential). This section then outlines what you are requesting that the recipient do to remedy the situation, for example, by:

  • providing a written declaration that they will stop using your IP immediately 

  • paying a fee (ie a licence fee) to use your IP

  • giving correct credit to the IP’s creator

  • delivering to you any materials of products that use your IP so that you can destroy them

  • withdrawing any applications to, for example, register their infringing trade mark 

• common law rights - common law rights are those which have arisen over time by virtue of case law (ie law created by the courts rather than by Parliament). Some IP is protected by common law rights rather than by legislation. For example, unregistered trade marks are enforced via the common law action for ‘passing off’, whereas registered trade marks are protected by action under the Trade Marks Act 1994. This Letter refers to common law rights when they are relevant to the type of IP in question

• request for a response within a given timeframe - this section requests that the Letter’s recipient responds, ideally by performing or undertaking to perform the actions you’ve set out above, within a certain reasonable period of time. It sets out your intention to pursue further legal action if you do not receive a satisfactory response by the given deadline 

If you want your Cease and Desist Letter to include further or more detailed provisions, you can edit your document. However, if you do this, you may want a lawyer to review the document for you (or to make the changes for you) to make sure that your modified Cease and Desist Letter complies with all relevant laws and meets your specific needs. Use Rocket Lawyer’s Ask a lawyer service for assistance.

Be sure that the recipient of your Letter is definitely in breach of your IP rights

If you send a Cease and Desist Letter to somebody alleging that they’ve breached your IP rights, you could be at risk of them bringing an action (ie a legal claim) against you for ‘making a threat of infringement proceedings’. If your Letter contains what a reasonable person in the recipient’s position would interpret as a threat that you will initiate legal proceedings for their infringement of your patent, registered trade mark, or design right, this may constitute a threat. You may be able to avoid such claims if either:

• you meet the ‘permitted purpose’ exception (eg your Letter is for the purpose of making the recipient aware that your IP rights exist). Asking the recipient to stop doing something that infringes your IP or to deliver to you their property which contains your IP (as this template does) is not a permitted purpose

• you’re covered by the ‘justification’ defence. This defence may be used in court if you can show that the recipient’s conduct does constitute an infringement of your relevant IP rights, or

• you’re claiming for a type of IP right that is not covered by this type of claim (eg unregistered trade marks or copyright). Be aware, however, that similar common law claims may apply for threats regarding these types of IP

Consider the justification defence

The justification defence is a key method of avoiding these claims (or successfully fighting them in court). To make sure you can use this defence if needed when creating a Cease and Desist Letter, you should always: 

• make sure your IP right(s) that the Letter is about are valid. Make sure they’re correctly registered (if they need to be so) and ensure they haven’t expired

• make sure that the recipient’s conduct does infringe on your rights. For example: 

  • make sure the products they’re making are similar enough to your design or trade mark to constitute infringement

  • thoroughly investigate to make sure they don’t have any possible prior rights to your IP (eg if you and the recipient have made coinciding applications to register the same trade mark)

This can be a complex and risky area of law. If you’re not entirely confident that, for example, your Letter’s recipient is definitely in breach of your IP rights, you should Ask a lawyer for advice. For more information on unjustified threats of infringement proceedings, read the Government’s guidance.

Protect your IP

Although lots of IP is protected without your needing to do anything (eg unregistered trade marks), it can be prudent to take steps to give your IP rights greater protection to reduce the chance of infringements happening in the future. For example, you could register your trade marks in the UK or, if relevant, in the EU. Registering your IP makes it easier for others to identify your IP rights (eg by searching databases, like the trade mark register) so that they can avoid infringing them. It also makes it easier for you to bring legal action to protect your IP if you need to in the future. For more information, read Remedies for intellectual property right infringement.

Consider other options for resolution

If somebody is using your IP without permission, you may want to bring legal action against them. However, it can sometimes be more commercially prudent to agree on other arrangements. For example, you could negotiate a Licence agreement with the infringer, whereby they are allowed to use your IP in exchange for a fee. For more information, read Intellectual property licensing and Reaching an agreement (intellectual property infringement).

Understand when to seek advice from a lawyer

In some circumstances, it’s good practice to Ask a lawyer for advice to ensure that you’re complying with the law and that your business is well protected from risk. You should ask for advice if: 

• you’re not sure which type of IP right your creation is protected by

• you want a Cease and Desist Letter for another purpose (ie other than for intellectual property infringement or defamation)

• you’re not completely sure that the intended recipient is infringing on your IP rights, or you’re otherwise concerned about claims for unjustified threats of IP infringement

• the recipient does not respond to this Letter and you want to take the issue further