Trade mark cease and desist letter

A cease and desist letter tells another business that its use of a sign infringes your registered trade mark and asks it to stop. This template sets out the rights relied on, the use complained of, why that use infringes, what is required and by when, and encloses a form of undertakings for the recipient to sign.

Check the register before you write anything

Confirm on the UK Intellectual Property Office register that the mark is registered, still in force, renewed, and covers the goods or services the other business is actually using it for. A letter based on a lapsed registration, or on goods outside your specification, is worse than no letter: it invites a reply that dismantles your position and makes the next step harder.

Unjustified threats are actionable

Sections 21 to 21F of the Trade Marks Act 1994 make an unjustified threat of infringement proceedings actionable. The person threatened can sue for a declaration, an injunction and damages. That is why the tone of this letter is a legal question rather than a stylistic one: keep it factual and proportionate, say only what can be proved, and do not threaten proceedings you are not prepared to bring.

Who you may safely write to

A threat is generally safe when made to the primary actor: the person who applied the mark to goods or their packaging, imported such goods, or supplied services under the mark. It is risky when aimed at a retailer, a distributor, a customer or an online platform. Do not send this letter to a mere retailer or customer without taking advice first, however obvious the infringement looks.

What the letter covers

Your registered rights, with the registration number and classes. The use complained of. Why that use infringes, with three options covering identical marks on identical goods, similar marks with a likelihood of confusion, and marks with a reputation under section 10(3). What you require, with a deadline. Damages or an account of profits. How settlement correspondence should be marked. What happens if there is no reply. A reservation of rights. The enclosure is a form of undertakings.

If proceedings are likely

A fuller letter of claim under the Practice Direction on Pre-Action Conduct and Protocols is usually the right next step. A court can penalise a claimant in costs for issuing without giving the other side a fair opportunity to respond. Trade mark disputes turn on the detail of the register entry, the sign used and the goods involved, so have the letter reviewed before it goes.