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BriffaWay – Cease and Desist: Maybe if you ask me nicely – Part I

November 8, 2018, By

The do’s and don’ts of cease and desist and how to avoid a PR disaster.

We have written in this blog about the use of cease and desist letters to prevent others infringing on your intellectual property – Cease and Desist Letters – what are they for and how can they help?. There is no doubt that a well written letter making a formal request that the other side stop their infringing activity is an extremely useful tool at the disposal of an intellectual property owner. These letters are often used to convey to an infringer that you mean business and are prepared to pursue legal action while at the same time you are open to working on a commercial settlement. But contrary to popular belief these letters and not ‘standard.’ It takes great skill to prepare a good letter and a letter needs to be carefully crafted to achieve the result your business actually wants. One thing which is increasingly important to consider is how your letter will be viewed by the public at large as the use of social media is used by recipients of these letters to tell the world about it and engage others in discussion about your brand and reputation. Nothing should make an intellectual property lawyer cringe more than have a letter they have written mocked on the Internet. No business wants to come across as a trade mark bully and yet time and time again we see letters sent by reputable businesses which come across as just that – bullying.

At Briffa we work hard to avoid the risk of any damage when we write cease and desist letters. To do this we make sure we not only understand your business but that we understand the business and motivations of your opponent. To take an obvious example writing to a non-commercial entity such as a fan site demands a soft approach, perhaps pointing out the need for you to control your IP and giving the business time to wind down its infringing activity. Approaches to commercial entities require a bit more force, but again there are levels of what is appropriate. Is the infringing use you have discovered likely to be a genuine mistake on the part of the infringer who may be unaware of you and/or ignorant about intellectual property rights? Conversely, is the infringer a close competitor, perhaps an employee who has set up in business competition with you or a business that has been a constant thorn in your side over many years. Accessing the situation and the impact of your letter is vital. The aim is to bring about a commercial solution, not drive the infringer underground or worse onto social media.

One of the most notorious examples of a cease and desist gone wrong is one written by lawyers acting for Brew Dog. Having secured a registration for Lone Wolf, this successful craft brewer founded by James Watt and Martin Dickie sent a cease and desist letter to the owner of a bar in Birmingham which opened using the same name. As well as asking for the use to stop the letter demanded costs and damages. The bar staggered by the level of aggression toward it went public. A social media campaign was picked up by local and national press. Questions were asked about how Brew Dog had lost its way. Far from the image of anarchic punk brewer’s doing things their way they had in fact become rather corporate. When the media storm hit, Brew Dog did its best to repair the damage. However, their efforts were not successful and the damage done has endured.

In our next blog about cease and desist letters do’s and don’ts we will discuss what to do if you are on the receiving end of one of these letters.

Written by Margaret Briffa