As intellectual property lawyers we spend much of our time either sending or responding to “cease and desist” letters. These letters are the first step in an IP claim and are essentially designed to set out the rights of the aggrieved party along with the various “remedies” which they are seeking to obtain.
Typically the scenario is as follows, Party A owns some IP, such as a trade mark, a design, a patent or a copyright work. Party A places a high value on its IP and has spent a lot of time creating it. Party B then comes along and appears to be infringing the IP. In order to put a stop to this infringement, and as a pre-cursor to court proceedings, Party A issues its cease and desist letter.
The letter should set out the exact rights that Party A claims to own along with sufficient evidence of those rights. Registered intellectual property rights likes trade marks and patents are easy to prove with certificates that can be checked on public registries. However unregistered rights like copyright or unregistered designs require a bit more work, and Party A should explain who authored the work, who the current owner is (if different from the author) and why the IP rights subsist.
The letter should also set out the remedies that Party A is seeking. Typically these would be to stop infringing activities (obviously the main aim), to destroy any remaining stock or infringing materials, to provide written undertakings preventing any future infringement, to pay financial damages and to pay legal costs.
Assuming the cease and desist letter covers the above then there is a case to answer and a response should be sent. Normally a defence to an IP infringement claim would involve two parts, although only one is needed in order to be successful:
1. Questioning the validity of the IP – if the rights are not valid, they cannot be infringed; and
2. Questioning the allegation of infringement – each IP right has its own test for infringement, for example copyright infringement requires the whole or a substantial part of an original work to be copied. However, it is not unlawful to be inspired by a copyright work or concept and to create something else which is independent from it.
So, if you are unlucky enough to receive a cease and desist letter, don’t panic. There may well be scope to defend the claim and you should seek expert legal advice before responding. Fortunately, if you’re reading this then you’re in the right place and our expert solicitors are on hand to fight your corner, all you need to do is get in touch.
Written by Will Miles, Solicitor