What is a Trade Mark Cease and Desist Letter?

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Table of Contents

• Infringement
• Substantially Identical or Deceptively Similar
• Closely Related to the Goods or Services
• Protecting Your Trade Mark Through a Cease and Desist Letter
• Responding to a Cease and Desist Letter
• Key Takeaways 
• Frequently Asked Questions

If you wish to enforce your intellectual property (IP) rights, you can do so through a trade mark cease and desist letter. Indeed, the ability to enforce a trade mark is one of the main reasons why it has significant value. With a registered trade mark, the owner may take action against any other party who makes unauthorised use of their IP. This article will discuss trade mark infringement, the role of the cease and desist letter, and tips on how to respond if you receive one.

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Infringement

You can issue a trade mark cease and desist letter when infringement occurs. However, whether someone infringes on your trade mark is a complex and fact-driven legal question. To assess this, a trade mark lawyer will try to determine whether the unauthorised trade mark is: 

• substantially identical or deceptively similar to the registered trade mark; and
• used for closely related goods or services to those covered in the trade mark registration.

Substantially Identical or Deceptively Similar

You can determine infringement by comparing the essential features of the trade marks and to what extent they are similar or different. Furthermore, a side-by-side comparison will assist in determining if the trade mark is identical to another by taking into account aspects like how the marks look and sound. 

However, the test for deceptive similarity, is based on whether consumers are likely to be confused about the origin of the trade marks.

Closely Related to the Goods or Services

Trade mark registration protects brands within their relevant classes of goods and services. For example, class 25 for footwear would protect a business that manufactures shoes, amongst other relevant classes. To prove the occurrence of infringement, the use of the infringing sign must be in the same or closely related classes as the registered trade mark. If the infringing sign and trade mark is in the same or similar classes of goods or services, this may lead to confusion among consumers.

Protecting Your Trade Mark Through a Cease and Desist Letter

Sending a cease and desist letter is the first step in enforcing your trade mark registration. If you are aware of another party who you believe is infringing your trade mark, you can use this letter to outline your concerns and demands, including that they immediately stop using your trade mark. It can also include: 

• ownership details of your trade mark; 
• the details of the infringement; and
• your willingness to take the matter to court, if necessary.

Responding to a Cease and Desist Letter

If you are on the receiving end of a cease and desist letter, it is essential to understand the contents of the letter. Although it is not a court notice, it does outline the trade mark owner’s intention in enforcing their trade mark rights.

The first step would be to determine whether or not your use of the sign amounts to trade mark infringement. Whatever the outcome of your assessment, it is best practice to respond to a cease and desist letter either by acknowledging and accepting their request or outlining your defence to their claims.

Key Takeaways 

In short, using a cease and desist letter is an excellent way to enforce your trade mark rights on another party. However, to do so, you must be sure that they are infringing on your mark. To determine if this is the case, you must prove that infringing mark is:

• substantially identical or deceptively similar to your trade mark; and
• it is closely related to the goods or services your trade mark protects.

If you have received a cease and desist letter or wish to issue one to another party, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page. 

Frequently Asked Questions