Mikołaj Lech

patent attorney

A lawyer, who specializes in industrial property law, combating unfair competition and copyright. Thanks to work in Patent Agency he has a contact with the current problems of entrepreneurs.
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15 Nov

Cease and desist letter and trademark infringement

Today I would like to explain to you what a cease and desist letter of trademark infringement is. And this is the official pre-trial letter. It is sent by the proprietor of the trademark or the law firm representing him. It is addressed to the person accused of breaking the law. How to react to such a letter?


I know from experience that these types of letters are different.

Sometimes they are written in a polite but firm language. Other times in a very offensive form. The recipient of the letter has a deadline to reply.

Usually between 7 and 14 days.

Though one time I came across a request to answer within 72 hours.

Well, but this is an extremely aggressive play.

In this type of letters, the most frequent requests are:

  • stop further infringement of the trade mark protection right;
  • payment of appropriate compensation;
  • disclosure of information, e.g. what quantities of goods have been placed on the market;
  • sign a declaration of non-violation of the law in the future.

 

Cease and desist letter of trademark infringement does not prejudge any breach of the law.

Often the person who receives this type of letter is deeply shocked.

Suddenly he realizes that for several years he ran a company that violated someone else’s exclusive rights. Just claiming compensation makes your heart beat faster.

Receiving such a letter may suggest problems.

In itself, however, it does not automatically mean that there has actually been an infringement.

Well, registered trademark owners sometimes over-scare competition. And this happens when the similarity of the signs is small. Everything is, however, evaluated. So if you want to find out if the accusations of breaking the law are justified – go to the patent attorney for legal advice.

 

Some things you can check yourself.

Cease and desist letter of trademark infringement should indicate the number of the right of protection. Attaching the certificate of registration is also good. However, having the registration number, you can check on the website of the Patent Office:

– who is the owner of the mark;
– what exact term is protected;
– what goods and services have been granted protection;
– until when the protection applies, and
– what is the territory of protection.

Why is this so important?

cease and desist letterTo speak of a breach of protection law at all, the law itself must be in force. Trademarks are registered for 10 years. After this period, such protection may be extended for another such period.

However, entrepreneurs sometimes forget about it.

They often still use the R in the circle symbol next to company’s logo over and over again, although protection has long expired.

In addition to the time limit, there is also a territorial limit.

If someone protects their trademark in Germany and demands that you stop using the name in Poland, you can be calm. Provided, of course, that you did not copy its graphic design.

This one is protected by copyright.

A more complicated situation occurs when the goods and services are similar and the name itself. The trademark protects against the use of not only identical but similar signs.

So you may find that your company name is only partially similar to someone else’s trademark.

The question arises whether it differs sufficiently or not. A patent attorney will be able to answer this question. He deals with trademarks in everyday work.

 

How do you respond to these types of letters?

I will not discover America saying that it all depends on the particular case.

If, based on the facts, we believe that the allegations are unfounded, we can make an appropriate response. However, when the violation is evident it is wise to reach a settlement.

Even if it means you have to pay compensation.

If you have received cease and desist letter of trademark infringement remember one thing. Trademark owner probably has evidence against you. For example, it could be:

purchase invoice, product photos or website screenshots.

As I wrote, this does not mean that you have violated the law. However, you must take into account that if you do not comply with his demands, the case will go to court. It would be a very reckless step to get into a dispute when the case is lost in advance.

Cease and desist letter of trademark infringement means that someone already knows about your business. Now everything should be carefully analyzed and reacted accordingly. The situation is serious, but perhaps not hopeless.

 

Fot. 1 – davus / CC BY-NC-SA

Mikołaj Lech

Do you need legal help? Contact with me.
+48 607 416 240
office@lech.bydgoszcz.pl
Mikołaj Lech

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