Cease and desist letter UK: a complete guide for SMEs

Posted on February 19, 2021
Posted by Marion Kennedy

cease and desist letter UKA cease and desist letter should be used if you believe someone is infringing your intellectual property and you want to ask them to stop. Although a cease and desist letter has no legal force, it can cause the recipient to stop the infringing behaviour (especially if they did not know they were breaching your intellectual property rights). By sending a cease and desist letter, you clearly explain what rights you believe are being breached and what actions you want the recipient to take. Writing to the person who is breaching your intellectual property in a calm and reasonable way can help to minimise the risk of having to take costly and lengthy legal action.

 

What is a cease and desist letter?

A cease and desist letter is a letter demanding that a person stops doing something, eg stops using someone else’s trade mark. It is not legally binding, although you should not ignore it if you receive one. You can use our template cease and desist letter UK to generate your own.

If you believe someone is infringing your intellectual property, the first option to consider before taking any other steps is sending a cease and desist letter setting out your position and asking the person to stop doing the infringing act. A cease and desist letter cannot force the person you have written to to stop doing anything or to pay any money to you. However, receiving the letter may cause them to stop, especially if they were not aware that what they were doing infringed upon your IP rights.

 

What should a cease and desist letter contain?

Your cease and desist letter should include:

  1. who you are and what your business does;
  2. the nature of the IP rights that you feel have been infringed (eg a registered trade mark or copyright);
  3. details of the product or service the person you are writing to provides which is infringing your IP rights; and
  4. how the product or service infringes your IP rights.

You should write the letter calmly and remain professional. It is important to be aware that if you wrongly threaten to sue someone in relation to IP rights, you can actually open yourself up to being sued. It is also important to bear in mind that if you do end up going to court over the dispute and lose, the court will take into account your behaviour leading up to the court case when deciding how much money you have to pay the other person.

However, letting someone know that a right exists is not the same thing as threatening legal action, and a letter is a good way to start off a process which might lead to negotiation, mediation or an agreement, instead of legal action.

 

Can a cease and desist letter force someone to take certain actions?

No, a cease and desist letter has no legal force. Even if it is written by a lawyer or demands compensation for the alleged intellectual property infringement, it cannot compel the recipient to stop doing anything or to pay any money to the sender.

 

What are the next steps if a person agrees to stop infringing my intellectual property after I have sent them a cease and desist letter?

If you send a cease and desist letter and this motivates the person who is infringing your IP to stop, you should get a formal agreement in writing from them recognising that they have been infringing your rights, and that they agree to stop. If your competitor resumes infringing your rights after agreeing to stop and you want to take them to court, it may well be easier with this agreement as evidence. You may want to seek legal advice about what this agreement should contain, as it will depend entirely on the circumstances and what has taken place. For access to a specialist lawyer in a few simple steps, you can use our Ask a Lawyer service.

 

Responding to a cease and desist letter

How should I respond if I receive a cease and desist letter from someone who thinks I am breaching their intellectual property?

You should not ignore a cease and desist letter under any circumstances, in the hope that the issue goes away . Often a cease and desist letter signals that the sender is willing to take you to court if you do not stop doing the act complained about in the letter. Therefore, ignoring a cease and desist letter can encourage the other person to formally take you to court using a claim form. Further, if you do end up going to court over the dispute and lose, the court may make you pay the other person more money because you ignored their original letters.

You should always respond in private to the sender, and in a calm and reasonable manner. Being aggressive or inflammatory will not help you to resolve the situation , and may well cause you more time, money, and stress in the long run. Further, if you wrongly threaten to sue someone in relation to IP rights to try to get them to back off, you can actually open yourself up to being sued. It is also important to bear in mind that if you do end up going to court over the dispute and lose, the court will take into account your behaviour leading up to the court case when deciding how much money you have to pay the other person. It is therefore crucial to always respond calmly and reasonably to a cease and desist letter.

 

What should my response to a cease and desist letter say if I know I am not infringing the sender’s intellectual property?

A cease and desist letter will describe the acts which the sender claims are infringing their intellectual property rights; for example, it may say you are selling goods using a logo similar to their trade mark. If you know for a fact that you are not doing the acts mentioned in the cease and desist letter, then you should send a polite but firm letter in reply explaining this. You should try to include some evidence for your claims (eg by enclosing a copy of your latest marketing campaign, which shows that you are not using the other person’s trade mark).

 

What should my response be if I accept that I am breaching someone’s intellectual property?

If you accept that your actions are infringing the sender’s intellectual property rights, you should stop using the sender’s intellectual property as requested in the letter (this might involve changing your business name or logo, removing packaging which contains the infringing intellectual property, removing content from your website, or stopping sale of infringing products, among other things). Note that if you are not sure whether you are infringing or not, you should contact a lawyer.

You are not legally obliged to pay any money to the sender of a cease and desist letter, but you should politely respond and advise the sender that you have stopped the offending actions or that you will stop within a certain time frame. If you do end up going to court over the dispute and lose, the court will take into account your behaviour leading up to the court case when deciding how much money you have to pay the other person. Cooperating with the sender may help you avoid court proceedings (for example , the sender may want you to sign an agreement confirming that you will not infringe their intellectual property in future). However, before signing any legal documentation requested by the sender, it is best to consult a lawyer (for example, your lawyer may be able to arrange for the documentation to release you from past liability for your infringements). For access to a specialist lawyer in a few simple steps, you can use our Ask a Lawyer service.

 

What should I do if I am not sure whether I am breaching the sender’s intellectual property?

If you are unsure whether you are doing the acts mentioned in the cease and desist letter, or are unsure about whether you should stop those acts, then you should consult a lawyer. For access to a specialist lawyer in a few simple steps, you can use our Ask a Lawyer service. A lawyer will be able to tell you whether you are indeed infringing on someone else’s intellectual property rights and whether you have any defences which might protect you. However, you should always bear in mind that it is very expensive to use lawyers extensively, and there are several low-cost ways of resolving disputes which do not involve going to court or using lawyers.

 

Can I sue someone who has sent me a cease and desist letter?

If you receive a threat of a lawsuit which is completely unjustified, then you may be able to sue whoever sent the letter. However, this is an aggressive and expensive move, and should be done only as a last resort where someone is persistently threatening to sue you for something which you have not done.

You can find more guidance on dealing with disputes about intellectual property at Disputes about intellectual property.

 

Other options to avoid court

Other than sending a cease and desist letter, how can I avoid going to court to settle my intellectual property dispute?

It is strongly recommended to avoid going to court to settle your intellectual property dispute where possible. Going to court can be very expensive. It is also time-consuming, stressful, and distracting for your business. Therefore, you should only ever go to court as a last resort.

When someone raises an IP issue with you, your first action should always be to try to resolve the dispute personally with the other person, to keep costs down and maintain your business relationship (eg by writing a cease and desist letter as set out in this guide). However, even if the other person does not wish to resolve matters personally, and wishes to get lawyers involved, you can still use cheaper, quicker, out-of-court methods to resolve your dispute. For example:

  1. you can use lawyers to help you try to negotiate a settlement without going to court. Sometimes having a middleman between you and the person with whom you have a dispute can help diffuse the tension;
  2. if your dispute is about patent infringement, you can pay £200 and ask the IPO to give a written opinion on the dispute. This will be an independent, expert piece of advice on who is in the right, and can be used as the basis for resolving your dispute. If you wish to do this, you should send two copies of Patents Form 17 and the £200 fee to the IPO, and two copies of any statements and evidence which you wish the IPO to consider. The IPO will normally take less than three months to give its opinion; or
  3. you can use the IPO mediation service. This is where an independent expert from the IPO helps you negotiate a resolution of your dispute. A mediator will not make a decision on your dispute, but can help you resolve the dispute yourselves. The basic fee is up to £450 for a one-day mediation, although you will also need to pay your lawyers’ fees if you use a lawyer for any of the preparation or mediation. Mediation can only happen if both you and the other person agree to it. If you agree to hold a mediation, you should send written confirmation to the IPO at this email address: mediation@ipo.gov.uk. They will help you organise the mediator and the mediation.

You can find more guidance on dealing with disputes about intellectual property at Disputes about intellectual property.

 

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