It is very common in practice someone consciously or unconsciously to use in the commercial activity or register similar to an earlier trademark. There are also many cases of copyright infringement. Infringers can be easily found on the Internet, at exhibitions or in magazines. What can be done in such cases? The fastest and most appropriate way for resolving such disputes is a cease and desist letter to be sent. The cease and desist letter is a legal remedy commonly used in practice to bring an end an infringement of a trademark, copyright, or other intellectual property rights. The notification shall contain an explanation of the infringement committed and a request for voluntary termination of the infringement shall be also requested. In the event that the infringer does not cease the infringement, the defaulting party has the right to take subsequent procedural steps to be able to defend his/her legitimate rights. Sending a cease and desist letter much cheaper than initiating court proceedings.
Many intellectual property rights infringements are done in a very unconscious manner, and in most cases, after the infringers receive a cease and desist letter, the infringement is stopped and no further proceedings are taken.
When are cease and desist letters sent?
- When someone uses similar or identical to your trademark to produce similar/identical goods or offer similar/identical services on the same territory.
- When someone infringes your copyright.
- When there is an infringement of your patent rights.
- When there is an infringement of your industrial design rights.
- Unauthorized disclosure of confidential information.
You are advised to collect as much evidence as possible of the infringement, such as making a screenshot of the infringer’s web site where there is evidence of the infringement committed and the like.
What should the cease and desist letter contain?
The cease and desist letter shall contain the following:
- Clear identification of the parties.
- Clear identification of the intellectual property that has been infringed.
- Industries in which parties operate.
- A detailed description of the infringement and the negative consequences of the infringement. For example, if a trademark owner’s rights have been infringed, it can be described that there is a likelihood of confusion on the part of consumers and creating a false perception of consumers for the manufacturer of the goods which means that consumers will consider that the services offered or the goods produced originate from the same or economically related undertakings. Of course, in order to conclude in the cease and desist letter that there is a likelihood of confusion among consumers:
– a comparison between the two trademarks shall be made and it shall be concluded that the marks are similar or identical;
– a comparison of the goods and/or services shall be made and it shall be concluded that the goods/ services are similar or identical;
– the degree of distinctiveness of the earlier mark shall be analyzed;
– it shall be concluded that the relevant public is the same;
– it shall be concluded that the commercial channels for the provision of services or the presentation of the goods are the same;
– it shall be concluded that the earlier mark is recognizable on the market;
– it shall be concluded that the relevant public will link the earlier mark to the infringer’s mark.
- A detailed description of the fact that the holder of the intellectual property right against whom an infringement is committed has earlier rights, supported by evidence.
- A clear description of the request for the cessation of the infringement, including a commitment to take no further actions that infringe the intellectual property rights of the right holder. Additionally, the infringer may be required to provide information on the names and addresses of producers, distributors, suppliers and other persons who previously held the goods or services, as well as the alleged wholesale distributors and retailers, as well as data on the quantities produced, supplied, received or ordered, as well as the revenue received from the goods or services in question. The right holder shall have the right to request and be surrendered to him the goods subject to the offense and to be compensated for damages. A separate declaration may also be required to be signed by the infringer that the latter undertakes not to infringe the intellectual property rights of the rightsholder in the future.
- Deadline for the cessation of the infringement.
- Description of the consequences if the infringement has not been stopped.
- Description of the evidence gathered that can be used in any future proceeding.
Finally, the cease and desist letter shall be signed.
How shall the cease and desist letter be sent?
The cease and desist can be sent by e-mail, fax, by post, as a registered letter with acknowledgment of receipt, in order to have proof that the letter has been received by its addressee. In addition, if you send the letter by e-mail, it is advisable to ask the recipient to confirm that the e-mail has been received in the e-mail content. If you do not receive a response, you can contact the addressee by phone. Additionally, it is advisable to send the cease and desist letter to the attorneys of the infringer if you have information about their contacts. It is a good idea also to attach the evidence that supports your assertions, such as a certificate for registration of a trademark; a screenshot of the website proving the infringement committed.
Is it necessary to hire a specialist to prepare the cease and desist letter?
Hiring a lawyer to draft the cease and desist letter is not mandatory but is highly recommended as the lawyer will carry out a risk assessment and will advise you whether there has actually been an infringement and whether sending a cease and desist letter is the most appropriate option.
What should I do if I receive a cease and desist letter?
In case you receive a cease and desist letter, it is advisable to contact an intellectual property expert who will analyze the tone of the letter and whether the requests of the other party are sufficiently clear and detailed. We recommend that you investigate the sender’s web site in more detail and also consider whether it a long time has passed since the infringement has occurred if any until the letter was sent. In addition, if the rights of the proprietor of a trademark have been infringed, you must assess whether the two marks are similar, whether the goods/services are similar, whether the relevant circle of users is the same, whether the commercial channels for the provision of services or the presentation of the goods are the same and whether the earlier mark is recognizable on the market and whether the relevant public will link the two marks.
There are ways to avoid receiving a cease and desist letter of trademark infringement, such as before you create a trademark, to conduct a preliminary trademark search to determine whether earlier foreign rights are being infringed.
In recent months, we’ve been contacted by several clients who have received cease and desist letters claiming that there is a copyright infringement. Not always the information in the cease and desist letters that are sent is correct. After we became acquainted with the letters sent to the clients it turned out that there is no infringement of intellectual property rights.
Therefore, when you have determined that your intellectual property right has been infringed or you have received a cease and desist letter, it is strongly recommended to contact an intellectual property specialist who will analyze whether there is an infringement of an Intellectual property right. In cases where a cease and desist letter shall be drafted and sent in order to avoid future disputes between the parties and due to the many peculiarities that have to be considered in the drafting of this type of letters, the assistance of an intellectual property attorney with experience in this area is recommended to be sought. The intellectual property specialist in Bulgaria Krasimira Kadieva will gladly assist you with the negotiation and drafting of cease and desist letter due to the fact that she has succeeded in her practice negotiated and drafted cease and desist letters, which until this moment have always led to the cessation of the infringement by the infringer or has proofed that there is no infringement of intellectual property rights in most cases where our clients have received cease and desist letters.
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Legal Disclaimer: This material prepared by Krasimira Kadieva aims to provide information about cease and desist letters. It does not constitute a legal opinion and cannot be interpreted as individual consultation on any concrete facts or circumstances. The advice of an intellectual property specialist should be obtained for specific questions and situations. For more information on the above-mentioned issues and individual consultations, please contact Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of this website. Krasimira Kadieva is a Bulgarian and European trademark and design attorney. She can assist in negotiating and drafting of cease and desist letters.