I have noticed that another business owner who offers the same services as I do is using my business name in relation to which I have a registered trademark. Shall I send a cease and desist letter?
If you discover that another business or organisation is using the same mark as your registered trademark, the first thing to do is to gather your evidence of the infringement, such as taking screenshots of any online infringements (ensuring that the date is noted) or taking notes of any reports from third parties that the mark is being used.
It is always better to try to have an informal conversation with the infringer before sending a cease and desist letter.
Often, when the infringer realises that they are actually infringing a registered trademark, and that there is the potential of legal action, they will quickly desist from using that mark.
It’s best to try to have this conversation over the telephone, but if you have tried and the infringer is not answering, or it isn’t possible to get a phone number for them, then an informal email is the next best thing.
I would write something along the lines of – “it has come to our attention that you have been using our registered trademark, namely X in relation to the same services that we offer. It might be the case that you don’t realise that you are infringing our registered trademark, so we’re happy to give you until X date (generally a time period of seven days from the date of the email is suitable) in which to confirm to us in writing that you will cease using this particular mark. If we don’t hear from you within that time period, we will need to look into taking legal action, but I very much hope that legal action can be avoided. I look forward to hearing from you.”
If you don’t receive a reply within the requested time, then you would move on to sending a more formal, cease-and-desist letter, a template for which is in my template library.
You do need to be careful when alleging trademark infringement as there exists the concept of “unjustified threats”, and if it is proved that you do not own the trademark or that there has not been an infringement, you could find yourself the subject of an unjustified threats action, and having to pay damages and for the legal costs of the other side.
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