If someone or a company is using the intellectual property of the right holder without permission, one of the earliest actions that the right holder can take is to send a cease and desist letter to the unauthorized infringer. In Canada, we call this a C&D letter , and the main content of the letter is usually to ask the recipient, the infringer, to stop infringing immediately and avoid infringing in the future, otherwise the infringer will face the risk of prosecution. As a simple and effective means of protecting one's own rights, the C&D letter can be used to protect the rights of the right holder and try to avoid possible expensive litigation.
Before sending a warning letter to an unauthorized infringer, the right holder may consider the following four aspects:
The first step is to consult an intellectual property lawyer
Before sending a C&D warning letter to an unauthorized infringer, it is very important to consult with an experienced intellectual property lawyer. A professional intellectual property lawyer will help you evaluate several important considerations, such as: the right basis for sending a C&D warning letter, whether the C&D warning letter is likely to have a negative impact on the rights of the right holder, when and how to communicate with the infringer, etc.
Step 2. Evaluate the strength of the right holder’s claim
Before issuing a C&D warning letter, the first thing the right holder needs to do is to collect all the evidence related to the infringement as much as possible and discuss with the IP lawyer the legal basis for all possible requests, including considering the following aspects:
- Scope of rights. Before asserting intellectual property rights against others, the right holder needs to determine his or her rights and ensure that he or she is the right holder or licensee.
- Rights take precedence. Confirm that the recipient of a C&D warning letter has no rights.
- Possible counterclaims. Consider whether the recipient of the C&D warning letter is likely to raise any defenses or counterclaims, including any defenses or counterclaims that might challenge the validity or enforceability of the right holder’s intellectual property rights.
Step 3: Evaluate the consequences of sending a C&D warning letter
If the possible risks of sending a C&D warning letter include invalidation of the patent rights of the right holder, the right holder should consider choosing another way. Lawyers are usually worried that the recipient of the C&D warning letter will sue before the right holder, or destroy important infringement evidence. In this case, the best option for the right holder is to file a lawsuit immediately instead of sending a C&D warning letter first.
Fourth, consider the content of the C&D warning letter
The C&D warning letter drafted by an IP lawyer needs to be specifically considered and weighed based on the specific circumstances of the infringement, the desired purpose, the relationship with the infringing party, etc. When the right holder adopts a more or less aggressive attitude in the C&D warning letter, the right holder needs to consider several factors, including:
- The value of the intellectual property rights owned by the right holder to the business operated by the right holder;
- The extent of the harm caused by the infringing activity;
- Whether the infringement was carried out with knowledge of the right holder’s intellectual property rights;
- The respective sizes of the right holder and the infringing party, including any existing relationship between the parties;
- The intended outcome and purpose of the C&D warning letter;
- Whether the C&D warning letter is likely to be made public by the infringing party, including through social media.
A well-drafted C&D warning letter will detail the rights of the right holder, the nature of the infringement, the infringing party must stop the infringement, any further steps the infringing party must take, and a deadline by which the right holder must confirm to avoid litigation. C&D letters will also typically include language protecting the rights holder’s rights, regardless of whether the infringing party complies with the requirements by the deadline specified in the letter.
