Cease and desist letters for IP infringement in the UK: A comprehensive guide

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If you’ve received a cease and desist letter for intellectual property infringement and want to know your next steps, read our article here.

Whether you’re looking to enforce your intellectual property rights or defend your position, it's important to be very cautious and consider the best next step. Contact our team to discuss your options, prospects, and risk profile.

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A cease and desist letter is a crucial first step for businesses and individuals in the UK seeking to protect their intellectual property (IP) from unauthorized use or infringement. 

This letter serves as a formal request for the infringing party to stop violating your IP rights and to refrain from future infringement. 

In this guide, we’ll explain the key role of cease and desist letters in managing IP disputes, the circumstances under which they should be used, the remedies available to IP holders, and the legal significance of such letters.

The importance of a cease and desist letter

A cease and desist letter is often the most effective way to address IP infringement in the early stages. 

It offers several advantages, including:

1. Preventing further violation: The letter warns the infringer to stop their alleged unauthorized use of your IP, helping to prevent further damage.
   
2. Avoiding costly legal action: In many cases, sending a cease and desist letter can resolve the dispute quickly without requiring lengthy and expensive court proceedings.
   
3. Establishing evidence: If the case goes to court, the letter can serve as evidence that the infringer was notified of the alleged infringement and chose to ignore it, which could influence the outcome of legal proceedings.

Despite this, a cease and desist letter should not be sent without forethought, as in many cases making unfounded claims can backfire. Should the dispute continue, it’s important to be able to demonstrate that conduct was undertaken correctly.

When is a cease and desist letter appropriate?

You can use a cease and desist letter in various scenarios where your IP rights are being violated. 

Within the IP sphere, common situations where this may be necessary include:

Trade mark infringement - This happens when another party uses your registered or unregistered trade mark in a way that causes confusion among consumers about the source of goods or services. 

Here it’s important to be accurate in any claims of trade mark infringement, as if your allegations are incorrect, this could result in a counterclaim for groundless threats.

Copyright infringement - If someone reproduces, distributes, or displays your copyrighted work without permission, you can send a cease and desist letter. 

Here it’s important to be able to evidence substantial evidence of copying. You should also be aware that sending the letter alerts the alleged infringer, which could make evidence gathering more difficult.

Patent infringement

If someone is manufacturing, selling, or using your patented invention without consent, this constitutes patent infringement. In this case, a cease and desist letter may be a useful tool.

Design right infringement

If a third party is using your registered (or unregistered) design without permission, whether it’s a product shape, pattern, or graphic, a cease and desist letter can require them to stop using your design and cease production, importation, or sale of infringing items.

Other breaches: Confidentiality and restrictive covenants

In cases where confidential business information is disclosed or used without authorisation, such as breaching a non-disclosure agreement (NDA), a cease and desist letter can be issued to demand that the infringer stop using the information and take steps to prevent further breaches. 

Employment contracts can often contain restrictive covenant clauses. If correctly drafted restrict employees or workers from certain activities should they leave an organisation. This can include things such as “non-compete” provisions but also has relevance to intellectual property.

In each of the above cases, you must seek support from intellectual property professionals to review and assess the validity of your claim.

What are the available remedies?

If the infringer does not comply with the cease and desist letter, further legal action may be necessary. 

The UK offers several remedies for IP infringement. These can vary depending on the type of alleged infringement - and can be sought either by request or compelled by the Court. 

They include:

1. Injunctions

An injunction is a court order requiring the infringer to immediately stop the infringing activity. 

This may be a temporary measure (interim injunction) or a permanent one, depending on the nature of the infringement and the case.

The injunction stops the alleged damaging activity from taking place - whilst the court decides the validity of the infringement claim. 

Note that if the defendant is found to not be infringing, they could seek damages for lost revenue resulting from loss of business whilst the injunction was in place.

2. Compensation and damages

If you’ve suffered financial loss due to the infringement, you may be entitled to damages. 

These damages could reflect the actual loss you’ve incurred or the profits the infringer made from the unlawful use of your IP. Typically you will seek whichever of these is deemed to be higher.

3. Destruction of infringing goods

In some cases, the Court may order the destruction of infringing goods or the infringer may be required to surrender the goods to be destroyed. 

This ensures that the unauthorized products do not re-enter the marketplace.

This is something that’s typically seen when it comes to instances of counterfeiting.

4. Account of profits

Instead of seeking damages, you may choose to request an account of the infringer’s profits from their unlawful use of your IP. 

This approach ensures that the infringer does not unjustly benefit from their actions.

Legal effect of a cease and desist letter

While a cease and desist letter is a powerful tool, it doesn’t have the legal force to compel the infringer to stop their actions - in and of itself. 

However, it is a key document in any potential legal dispute. 

By sending a cease and desist letter, you’re formally notifying the alleged infringer of their wrongdoing, which may lead to a resolution or, if ignored, strengthen your case should you need to pursue litigation.

It’s also important to note that in some jurisdictions, including the UK, sending a cease and desist letter is often necessary before pursuing legal action. 

It demonstrates that you have tried to resolve the matter amicably, which can influence the court’s decision if the case progresses to litigation.

In this way, the cease and desist letter should be viewed as a tactical and strategic tool, which when composed carefully, is done so to achieve the ideal outcome for the infringed party. 

This is another reason why it’s recommended to speak to an experienced advisor when preparing to contact an alleged infringer in this way.

What happens if the cease and desist letter is ignored?

If the infringer does not comply with the cease and desist letter, or if they continue the infringement, you may need to escalate the matter:

• Negotiation or mediation: Before resorting to litigation, you could consider negotiating with the infringer or engaging in mediation. This can often lead to a quicker and more cost-effective resolution.
  
• Court action: If other methods fail, you can file a lawsuit in the relevant court. Depending on the case, the court may grant an injunction, order damages, or impose other remedies.

The tactic you decide to deploy should be proportionate to the impact of the alleged infringement, your specialist advisor can provide guidance as to the best approach that makes the most commercial sense for your business.

Key components of a cease and desist letter

Most cease and desist letters contain a few key elements. These include:

1. Clear identification of the parties.
2. Accurate description and ownership details of the IP rights in question.
3. Detailed infringement information and evidence.
4. Demands for action (proportionate to the infringement alleged to have occurred).
5. Consequences of non-compliance.

It is critical from both a precision and validity perspective that you engage with legal support to compose this letter.

How to deliver a cease and desist letter

The method of delivery is important to ensure the letter is properly received. 

As a form of legal correspondence, receipt of the letter needs to be recorded and acknowledged by the receiving party.

There are a number of ways that this can be achieved such as signed delivery, as well as forms of recorded electronic delivery. Experienced advisors will also be able to assist you with this.

What happens after a cease and desist letter has been sent?

Once you have sent the cease and desist letter, and are sure that it has been received, you will wait for the response.

Within the letter you will have set out a set of requested actions, and typically a time limit for when this needs to be fulfilled.

Should the terms of your cease and desist not be complied with by the time the deadline has passed, you may then wish to speak to legal representatives to identify the next steps you can take in legally enforcing your rights.

Cease and desist letters in intellectual property: Conclusion

A cease and desist letter is a fundamental tool in defending your intellectual property rights in the UK. It is a tool which is commonly used, but often misunderstood by the sender. 

As a result, cease and desist letters can lack substance and in some instances can even work against the sender in securing what they set out to achieve.

Although not legally binding, it is an important first step in resolving IP disputes and protecting your assets. 

By issuing a well-drafted letter, you demonstrate your commitment to enforcing your rights and can often resolve the issue without the need for expensive litigation. 

If you believe your IP rights are being infringed, it’s essential to act quickly and seek professional advice. 

Virtuoso Legal specializes in intellectual property law and can help you craft an effective cease and desist letter tailored to your needs. 

Get in contact with our team today to discuss how we can support you and your business.

This guide provides a comprehensive overview of cease and desist letters in the UK, offering practical advice on when and how to use them, and what steps to take if the letter is ignored. 

For personalised support, contact Virtuoso Legal for expert assistance with your IP matters.

Have you received a cease and desist letter for IP? Read our guide here to find out what happens next.

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​The content on this website, including FAQs and legal posts, is for general informational purposes only and does not constitute legal advice. Laws vary by jurisdiction, and specific advice should always be sought for individual circumstances. Virtuoso Legal is not responsible for any losses arising from reliance on this content. For tailored advice, please contact us at 0113 237 9900 or enquiries@virtuosolegal.com.