Unfortunately cease and desist letters are a fact of life, they come in various shapes and sizes and can be referred to as a letter of claim or letter before action. The formula generally takes the following: an explanation of the relevant intellectual property right (eg a trade mark) and a demand to stop doing something (eg using a brand name) and can make for a harrowing read.
The Practice Direction – Pre-Action Conduct and Protocols (Protocol) gives specific guidance of what the court expects a cease and desist letter to include but does also explain that the recipient of the letter should respond in a reasonable time. This response needs to include confirmation as to which parts of the claim are accepted or denied so that the parties to a dispute can work to narrow the issues and get a resolution underway (in one shape or another). The Protocol also details that parties can be subject to sanctions from the court for a failure to comply with the Protocol and so our first recommendation is not to ignore it!
The Protocol won’t tell you what to respond with but that’s where we can help. A response to a cease and desist letter needs to be carefully considered and our second recommendation is to take your time.
Step one following receipt of a cease and desist should be understanding what IP right is being asserted against you; they each have their own test for infringement, and the writer of the cease and desist letter might not necessary have it all correct. Once you know how much weight the allegations against you carry and the extent of any infringing activities, it is then time to talk strategy.
This brings us on to step two, which is of course strategy. Strategy plays a big part in IP infringement issues and can make and break resolutions. For example, commercially is the brand name in question a low priority or something that needs to be protected and legally do you have any defences (eg prior use of a trade mark). Generally, consideration toward settlement should be given, it could be that there is a simple fix that doesn’t need the court’s time to adjudicate or that a party is willing to concede parts of their position to resolve the issue (eg altering the brand name).
Step three is the tricky one: the response. Say too much and be fearful for overdoing it, don’t say enough and have to respond again – the time old question. The response needs to capture your position and should be designed to nip the bud in the issue, after all who wants to speak to lawyers about infringement issues! The response tips are to make it clear and concise, ensure you respond in time (and communicate any reasons for a delay in responding) and then monitor.
A good response to a cease and desist letter should focus the issues in dispute and make way toward the resolution of the dispute. All of our lawyers are experts in responding to cease and desist letters and why not get in touch today to book a free consultation to discuss your response.
Written by Sam O’Toole, Associate
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