What should I do if a business that is infringing my registered trademark doesn’t reply to my cease and desist letter?
Your registered trademark gives you the legal right to a monopoly on your mark (whether that be a name, logo, strapline or something else) in the class that is registered in and for the activities that you listed in the specification.
If another organisation uses an identical mark in relation to goods or services which are identical with those for which it is registered, then this is an infringement.
Equally if an organisation uses a mark that is identical with the trademark and is used in relation to goods or services similar to those for which the trade mark is registered, or the mark is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trademark, then this is also an infringement.
Finally, if an organisation uses a mark that is identical with or similar to the trade mark where the trade mark has a reputation in the UK and the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark, this is also an infringement. This applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered.
If you discover that your registered trademark is being infringed, the first thing to do is gather evidence and take screenshots or photos of the infringement. Then send an informal email to the infringer alerting them to the fact that they have infringed your trademark and providing them with a period of time in which to cease using it and to confirm this to you in writing together with a declaration that they won’t use it in the future.
If the organisation infringing your trademark is a small business, you might find that they don’t understand the law about registered trademarks. Some small businesses may simply respond that they don’t think there is any risk of confusion and that they intend to keep using the infringing mark. Hence, you might also want to explain to them at this point that if the matter went to court, any infringement of your registered trademark would be ordered to cease and they would be liable to pay for your costs (because it should not have been necessary to have taken them to court).
If the informal email fails to elicit the confirmation, then you would send a more formal cease and desist letter. There is a template for this in my Small Business Legal Academy. You need to be sure that a) you own the registered trademark and b) there has been an infringement before you send the cease and desist letter; otherwise the third party could bring a claim against you for unjustified threats.
Then if the infringer fails to respond within your stated timescales to the cease and desist letter, the next step would be to send a letter before action. This is the final step before filing a court claim. It may carry more weight to have a lawyer who specialises in intellectual property litigation to send the letter before action for you. I imagine that it would cost anywhere between £500 and £1000 plus VAT to have such a letter before action drafted and sent on your behalf.
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The information contained above is provided for information purposes only. The contents of this article are not intended to amount to advice and you should not rely on any of the contents of this article. Professional advice should be obtained before taking or refraining from taking any action as a result of the contents of this article. We disclaim all liability and responsibility arising from any reliance placed on any of the contents of this article.
