The situation is very common. You’re a business owner and you have done everything in accordance with the law, even going the extra mile by getting your business registered as a trademark. And then you become aware of another business using your trademark in what seems to you like a trademark infringement and you want to know how you can get them to stop.
In almost all cases, the first step will be to write a “cease and desist” letter to the other party with the primary aim of getting them to stop using your trademark. The term “cease and desist letter” is more of an American term which the term used by Australian lawyers being a “letter of demand”.
The 3 things to include in a cease and desist letter template.
A Cease and Desist Letter Template and a Letter of Demand Template have three elements:
1. Outlining your legal rights to the other party.
This refers to enclosing your officially sanctioned government Trademark Certificate. It is often not considered by the trademark owner that it is possible that the other party was not aware of the registered trademark, and pointing this out clearly and showing your strong legal rights over the name/logo/brand may be sufficient to get them to stop.
Your legal rights are under section 120 of the Trade Marks Act 1995 (Cth) which provides that an infringement occurs when a person uses, as a trademark, a sign that is substantially identical with, or deceptively similar to, the registered trademark, in relation to services in respect of which the trademark is registered.
Your legal rights may also extend beyond trademark law, and may include the common law action of passing off and/or breaches of Australian Consumer Law (both these actions require a strong reputation and you should consult with a trademark lawyer before making such an accusation).
2. Outlining how the other party has infringed your rights.
You can then move on to show how the other party is infringing your registered trademark rights. Apart from a general statement to this effect, it will have more impact if you show specific examples of their infringement via website screen shots, social media evidence, or capture purchases from their business. It is important to be accurate here – if your trademark covers “clothing” then evidence of them using your trademark on “flower vases” will not legally be trademark infringement (and may look unprofessional on your behalf).
3. Making a statement as to your demands.
The main thrust of any trademark infringement demand is to get the other party to stop, and if possible, pay damages for their actions. Specifically, the remedies available to you trademark infringement and for breaches of Australian Consumer Law (if applicable) are 1) an injunction to stop the other party using the trademark and 2) damages and/or an account of profits.
If your legal rights are strong, then the other party normally understands that they have no choice but to change their business name/logo/brand. This may involve a changeover period so the other party can organise new branding, packaging, website URLs, change ASIC document etc.
Damages are more challenging as they can be difficult to quantify and it is always difficult to force another party to hand over damages, and this may take more action – such as a court action.
Can I write a cease and desist letter myself or should I use a lawyer?
You are wise to use a trademark lawyer. I have seen some instances of business owners being able to get another party to change their name/logo by approaching the other party without using a lawyer, but by far the most common result in this situation is an email reply claiming why they have the right (inaccurately) to use their name and they have been doing so for X years with no problems.
Much better results are achieved by using a trademark lawyer or trademark attorney. The letter will be written persuasively, be on point, and will come across with more authority. It will show the other party you are serious. Also, if the other party does engage a lawyer as well, their lawyer should confirm the letter (at least to the legal aspects) is correct.
How much does a cease and desist letter cost?
This depends on the particular case, such as how clear the trademark infringement is, how many parties are involved and how much is at stake. However, as an indication, we have taken on clients’ cases and sent out effective letters of demand for $770. The upper end of our fees to take on a matter, undertake a review, and issue a letter of demand is $1500.