In this article, the MIA’s Intellectual Property partner, Briffa, provides a whistle stop run through of the main considerations when reviewing a cease and desist letter…
The first thing to say, in the words of the Hitch Hikers Guide to Galaxy, is DON’T PANIC. Letters like this are sent every day and just because one party thinks that their rights have been infringed, it doesn’t necessarily mean that they’re correct. In order to assess the issue properly the first step is to work out exactly what the allegations are. More specifically which intellectual property rights are in issue and how are they claimed to have been infringed.
When it comes to defending IP actions it’s vital to view the claimant’s intellectual property rights with a critical eye. For example, in respect of a registered trade mark, if the mark has been registered for more than 5 years and it’s not in use, it could potentially be cancelled. Or in respect of a registered design, if the design isn’t novel, it can also be attacked. When it comes to unregistered rights like copyright, it’s important to ensure that the person/entity who instructed the letter actually owns the rights in the first place. Frequently the author of a particular work is not the party claiming infringement and sometimes parties fail to put in place correct legal assignments to actually transfer the rights.
Should it transpire that the rights in question are valid, then the next issue to assess is the infringement itself. Intellectual property rights each have their own tests for infringement and it’s vital that the correct test is properly applied. For example, the infringement of unregistered designs requires an act of copying whereas the infringement of a registered design doesn’t. Also, trade marks can be used to prevent confusingly similar marks in similar classes of goods (this is quite a broad right), whereas copyright can only stop the reproduction of the whole or a substantial part of a work (and therefore it’s a narrow right).
Once this has been dealt with we would then consider any specific defences, such as prior use for patent infringement or fair dealing for copyright infringement.
And of course, there are wider considerations beyond just the law. For example, what is the commercial reality of the infringement, have large numbers of goods been sold or is this a small product line? How much stock is left, who is currently selling it and what are the potential PR impacts of a dispute? Also, what is the claimant actually asking for? E.g. damages, costs or just a removal of certain goods from sale?
Last but not least, we need to consider timing. Letters such as this frequently have short response deadlines and it’s important to ensure that your legal advisors have enough time to take your instructions and prepare a robust response. So, act quickly if you receive this kind of letter because failing to reply could lead to court proceedings and potentially an adverse judgment.
So there you go, a whistle stop run through of the main considerations when reviewing a cease and desist letter. However, really the take home point is that legal advice is needed. Investing in the right advice from the outset can often shorten the length of any dispute and greatly reduce your exposure.
Birffa’s aim is to always find the most cost-effective solution for you, without sacrificing what you’ve built or damaging your business. This can be a fine line to tread but our expert solicitors are on hand to help you through this process.
Don’t forget that MIA members benefit from a free thirty minute consultation and special rates on all intellectual property and general commercial matters. Contact firstname.lastname@example.org for the details if you’d like someone to ease your legal headache!