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

November 13, 2018, By

We are often asked to advise on cease and desists letter received from brand owners. As discussed in our blog, Cease and Desist: Maybe if you ask me nicely, cease and desist letters can come in all shapes and sizes.

However for those not accustomed to receiving these letters, most have the effect of coming across as very threatening. They often warn of serious consequences for failing to agree a set of terms which the writer of the letter is demanding in order to resolve the matter without them taking further action. In short the receipt of such a letter often comes as a shock.

One of the most common reactions we have seen is for the recipient of the letter to pick up the phone to the writer and let them know all the reasons why they do not think their activities are a problem. This is a mistake. It will not resolve the matter as the writer clearly believes there is a problem and will not be so easily persuaded there is not. Our advice is to take your time to consider what is being said, investigate the strength of the claims being made and work out in the first instance if there is an issue or not. For example if you are accused of trade mark infringement, do you have evidence of use of your mark which predates the claimant’s use? If you are accused of copying, do you have evidence of your own independent design?

As a first step assessment of the actual merits of any claim made against you is vital and the best platform from which to consider your options. Having worked out where you stand legally the next steps is to decide how best to respond. If the claim is unfounded we would advise standing your ground and setting this out clearly and in detail in a response letter. In the trade mark world particularly there are a number of big brands who make it their business to challenge anyone who applies for a mark which is anywhere near its own even if in a completely different area as a way of monopolising a word completely. Think Sky, Monster and Easy for examples. The fear of a small business in this situation is that irrespective of the merit of the claim being made the costs involved in defending your position is too much. This is not however a good reason to cave in and you should seek advice on this as most claims can be resolved without the need for a long drawn out process. If you stand up to a bully and agree not to move into their field of business a compromise if often possible. If you are on good ground and a brand bully refuses to compromise the trade mark office or the court will make them pay for making claims they can’t support. You just need to hang on in there and get the support of lawyers who have experience in dealing with these situations.

Lawyers can also advise you on how and when to go public with any dispute. In our social media savvy world it is now more common than ever before for your customers to learn about these tussles online. A small business may consider this an effective strategy to gain sympathy or engage customers in discussion. You may believe that going public may pressure your opponent into dropping the matter. While social media has a place, it should be used wisely. Publishing your dispute does not necessarily make achieving a commercial solution easier. It can depend on the strength of your case. If you are not on good ground it can make things a lot worse.

If you go down the social media route how and what you publish is also important. There is a big difference between simply publishing what you have received and saying though a small business you are doing all you can to fight it, to publishing your opinion on big brand, its business and all it stands for. The most important thing before you go the publicity route or indeed before you decide how to respond to the claimant is to decide what you want to achieve. You respond to the claimant and your use of publicity must be geared to achieving your desired business result. Remember, your customers are not necessarily as interested in your disputes as you are. If you are seeking publicity how can you guarantee it is going to be positive and enhance your business overall. Be careful to ensure your good work and reputation don’t get bogged down in a public fight with another business that has itself got prolonged and more complex due to you involving customers.

At the end of the day there is no one correct response to the receipt of a cease and desist letter. It depends ultimately on what you want to achieve.  Responding to a cease and desist letter is therefore an art and it pays to take advice from lawyers with experience to make sure you get it right.

Written by Margaret Briffa