Reading time: 3 minutes

A party can enforce their intellectual property (IP) rights through a trade mark Cease and Desist letter. Enforcement is one the main reasons why a trade mark has value. It enables the trade mark’s owner to take action against any other party who uses their IP.


A trade mark Cease and Desist letter is issued when a trade mark infringement occurs. Whether there is a trade mark infringement is a complex and fact driven legal question. A trade mark lawyer will be looking to determine whether the sign is: 

  1. Substantially identical or deceptively similar, and
  2. closely related to the goods or services of the trade mark in question.

Substantially identical or deceptively similar

Infringement is determined by comparing the sign to the trade mark to determine what are its essential features and to what extent they are similar or different. If the sign is too similar to the trade mark, this may cause consumer confusion, which could lead to infringement.

Closely related to the goods or services

The trade mark system is organised to protect owners according to different classes of goods or services. For infringement to occur, the use of the sign must be in the same or closely related class description of the registered trade mark. If the class of both the sign and trade mark are the same or similar, 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 to protecting your trade mark. If you are aware of another party who you believe is infringing your trade mark, this letter can be used to outline your demands, including ceasing their use of your trade mark. It can also include ownership details of your trade mark, the details of the infringement as well as your willingness to take the matter to court, if necessary.

Responding to a Cease and Desist letter

It is important to understand what the contents of a trade mark Cease and Desist letter means. Although it is not a court notice, it does outline the trade mark owner’s seriousness in enforcing their trade mark rights.

You would want to first determine whether or not your use of the sign does amount to a 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. A trade mark lawyer will be able to assist in negotiating in your favour to save costs and to avoid going to court.


If you have received a Cease and Desist letter or wish to issue one to another party, it is often beneficial to consult with a qualified trade mark lawyer. One of our specialist LegalVision trade mark lawyers can provide you with advice on intellectual property infringement and your best strategy for success in drafting or responding to a Cease and Desist Letter.


COVID-19 Vaccines In The Workplace

Thursday 10 February | 11:00 - 11:45am

Can you compel employees to have a COVID-19 vaccine? Understand your rights and responsibilities as an employer. Register today for our free webinar.
Register Now

Preventing Wage Underpayment In Your Franchise

Wednesday 16 February | 11:00 - 11:45am

Learn how to identify and prevent wage underpayment in your franchise. Register today for our free webinar.
Register Now

How to Prevent and Manage Commercial Contract Disputes

Thursday 24 February | 11:00 - 11:45am

Learn how to prevent and manage common commercial contract disputes. Register today for our free webinar.
Register Now

About LegalVision: LegalVision is a commercial law firm that provides businesses with affordable and ongoing legal assistance through our industry-first membership.

By becoming a member, you'll have an experienced legal team ready to answer your questions, draft and review your contracts, and resolve your disputes. All the legal assistance your business needs, for a low monthly fee.

Learn more about our membership

Need Legal Help? Get a Free Fixed-Fee Quote

If you would like to receive a free fixed-fee quote or get in touch with our team, fill out the form below.

Our Awards

  • 2020 Excellence in Technology & Innovation Finalist – Australasian Law Awards
  • 2020 Employer of Choice Winner – Australasian Lawyer
  • 2021 Fastest Growing Law Firm - Financial Times APAC 500
  • 2020 AFR Fast 100 List - Australian Financial Review
  • 2021 Law Firm of the Year - Australasian Law Awards
  • 2019 Most Innovative Firm - Australasian Lawyer