As intellectual property lawyers, the MIA’s trusted IP partners at Briffa spend much of their time either sending or responding to “cease and desist” letters. These letters are the first step in an IP claim and are essentially designed to set out the rights of the aggrieved party along with the various “remedies” which they are seeking to obtain. Here, our friends at Briffa explain the main considerations when reviewing a cease and desist letter…
Typically the scenario is as follows, Party A owns some IP, such as a trade mark, a design, a patent or a copyright work. Party A places a high value on its IP and has spent a lot of time creating it. Party B then comes along and appears to be infringing the IP. In order to put a stop to this infringement, and as a pre-cursor to court proceedings, Party A issues its cease and desist letter.
The letter should set out the exact rights that Party A claims to own along with sufficient evidence of those rights. Registered intellectual property rights likes trade marks and patents are easy to prove with certificates that can be checked on public registries. However unregistered rights like copyright or unregistered designs require a bit more work, and Party A should explain who authored the work, who the current owner is (if different from the author) and why the IP rights subsist.
The letter should also set out the remedies that Party A is seeking. Typically these would be to stop infringing activities (obviously the main aim), to destroy any remaining stock or infringing materials, to provide written undertakings preventing any future infringement, to pay financial damages and to pay legal costs.
Assuming the cease and desist letter covers the above then there is a case to answer and a response should be sent. Normally a defence to an IP infringement claim would involve two parts, although only one is needed in order to be successful:
1. Questioning the validity of the IP – if the rights are not valid, they cannot be infringed; and
2. Questioning the allegation of infringement – each IP right has its own test for infringement, for example copyright infringement requires the whole or a substantial part of an original work to be copied. However, it is not unlawful to be inspired by a copyright work or concept and to create something else which is independent from it.
So, if you are unlucky enough to receive a cease and desist letter, don’t panic. There may well be scope to defend the claim and you should seek expert legal advice before responding.
Fortunately, if you’re an MIA member, our expert solicitors are on hand to fight your corner, all you need to do is get in touch! MIA members benefit from a free thirty minute consultation and special rates on all intellectual property and general commercial matters.
Briffa lawyers are experts in all aspects of contentious and non-contentious intellectual property law and practice. If you are starting a business and would like more information about ownership of IP or to know more about IP in general, please drop us an email or give us a call and we will be happy to arrange a free consultation with one of our specialist IP lawyers.
Contact firstname.lastname@example.org for the details if you’d like someone to ease your legal headache!