Receiving a cease and desist letter (sometimes called a letter of demand) alleging trade mark infringement can be both unexpected and unsettling—particularly when you have only recently begun using the trade mark in question. In Australia, such correspondence is typically issued by a trade mark owner who believes that your use of a name, logo, or slogan is identical or confusingly similar to their registered or unregistered trade mark and may cause confusion among consumers.
Below is a structured approach to handling such a situation:
1. Do Not Ignore the Letter
It is important not to disregard or delay in responding to a cease and desist letter. These letters often include strict deadlines and may foreshadow formal legal proceedings if not addressed in a timely manner.
2. Review the Letter Thoroughly
Examine the contents of the letter carefully, paying particular attention to:
- The specific trade mark the sender claims to own
- The goods or services for which the trade mark is used
- The basis of their infringement allegation
- The actions they are requesting or demanding (e.g. ceasing use, rebranding, payment of compensation)
3. Seek Legal Advice Promptly
Before taking any steps, it is strongly advisable to consult a qualified trade mark or intellectual property lawyer. Legal counsel can assist in:
- Assessing the validity and enforceability of the other party’s trade mark rights
- Determining whether your use is likely to constitute infringement
- Identifying any potential defences (e.g. honest concurrent use, absence of likelihood of confusion)
- Advising on whether to negotiate, comply with the demands, or challenge the allegations
4. Do Not Admit Liability
Until you have received legal advice, refrain from admitting fault, accepting liability, or agreeing to any of the demands outlined in the letter. Even a well-intentioned or conciliatory response may later be used against you.
5. Evaluate Your Options
Based on the advice received, your potential courses of action may include:
- Rebranding or modifying your current trade mark
- Negotiating a coexistence agreement with the other party
- Challenging the validity of their trade mark registration
- Asserting your right to use the mark (e.g. if you were the first to use it, or if your use is otherwise legally justifiable)
6. Respond Swiftly but Strategically
Trade mark disputes can escalate rapidly. Taking prompt yet considered action with the benefit of expert legal guidance—can help protect your business interests and minimise potential risks and costs.
Conclusion
Trade mark law in Australia is complex, and no two situations are alike. If you have received a cease and desist letter, the most prudent course of action is to remain calm, seek professional legal advice, and take informed steps tailored to your specific circumstances.