We have made minor amendments to make this letter and undertakings more precise.
Letter of claim (previously known as a "letter before action" and also referred to as a "cease and desist" letter) to be used in relation to the infringement of registered trade marks, with separate undertakings.
[On headed notepaper of trade mark owner's solicitors]
For the attention of the directors/company secretary[DATE]
Dear Sirs
1. We act for [NAME OF CLIENT] of [ADDRESS].
2. Our client is the registered proprietor of [UK OR Community] trade mark number [NUMBER] for [WORDS CONTAINED IN MARK, OR IF NONE, A BRIEF DESCRIPTION OF MARK] in class[es] [CLASS(ES)] in respect of [,among other things,] [ SPECIFICATION OR RELEVANT EXTRACTS]. We enclose for your information details of our client's registration (the Trade Mark), which has an effective date of [DATE].
[3. SET OUT BRIEF DETAILS OF CLIENT'S USE OF THE MARK IF RELEVANT.]
4. Our client discovered [DATE] that your company has been [ADD DETAILS OF ALLEGED INFRINGEMENT BUT NOTE THREATS PROVISIONS - SEE DRAFTING NOTE]. [We enclose a [sample OR photograph] of the infringing [DESCRIBE DOCUMENT OR ITEM]].
5. We have advised our client that the application by you of the sign [INFRINGER'S SIGN] to [TYPE OF GOODS] is an infringement of the Trade Mark.
6. [Your sign [INFRINGER'S SIGN] is identical with the Trade Mark and is being applied to goods that are identical with goods covered by the Trade Mark, contrary to [section 10(1) of the Trade Marks Act 1994 (TMA) OR Article 9(1)(a) of the Community Trade Mark Regulation (207/2009/EC) (CTM Regulation)]. Alternatively, your sign [INFRINGER’S SIGN] is identical with, or similar to, the Trade Mark and is being applied to goods that are identical with, or similar to, the goods covered by the Trade Mark. As a result, there is a likelihood of confusion on the part of the public, which includes the likelihood of association with the Trade Mark, contrary to [section 10(2) of the TMA OR Article 9(1)(b) of the CTM Regulation].
AND/OR
The Trade Mark has a reputation within the [United Kingdom OR EU]. Your application to goods of the sign [INFRINGING SIGN] takes unfair advantage of, or is detrimental to, the distinctive character of the Trade Mark, contrary to [section 10(3) of the Trade Marks Act 1994 OR Article 9(1)(c) of the Community Trade Mark Regulation (207/2009/EC)].]
7. This infringement is unacceptable to our client and, in the circumstances, it requires from you signed undertakings in the form attached, to be returned to us by [TIME] on [DATE]. In addition, our client requires your proposals for financial compensation for the infringement.
8. If proceedings become necessary (which may be issued and served without further notice to you), the remedies available to our client include an injunction [pending trial], delivery up or (at our client's option) destruction of all infringing goods, damages or an account of profits, legal costs and interest. In the meantime, our client reserves all its rights in this matter.
This is a complex area of law and we strongly recommend that you seek independent legal advice immediately.
We look forward to hearing from you by [TIME] on [DATE].
Yours faithfully,
................................................................
[NAME OF SENDER]
[On headed notepaper of infringing company]
[NAME OF TRADE MARK OWNER][DATE]
Dear Sirs
In consideration of your refraining from bringing legal proceedings against us for infringing your rights under [UK OR Community] trade mark number [NUMBER] in [WORD MARK OR DESCRIPTION OF MARK] in class[es] [CLASSES] (the Trade Mark) by virtue of our application of the sign [INFRINGER'S SIGN] (the Sign) to [TYPE OF GOODS] (Goods), we undertake, whether acting by ourselves, our directors, officers, employees or any of them howsoever, as follows:
1. Not now or in the future to apply any sign (which shall include, without limitation, the Sign or any similar sign) to [IDENTIFY TYPE OF GOODS] or similar goods which would amount to an infringement of the Trade Mark;
2. To deliver up to you by [DATE]:
(a) all Goods in our possession, custody or control to which the Sign has been applied without your permission; and
(b) all documents in our possession, custody or control which relate to our application of the Sign to the Goods, or to any other goods to which the Sign has been applied and which are covered by the specification of goods for the Trade Mark (Other Goods).
3. By [DATE] to retrieve all stocks of the Goods and Other Goods from all purchasers in the United Kingdom to the extent that such stocks remain within our power and use our best endeavours to retrieve such goods which are no longer within our power and deliver up these stocks to you in accordance with paragraph 2 above;
[4. To provide to you by [DATE] a witness statement, endorsed with a statement of truth, from a properly authorised officer of this company, confirming that we have complied fully and promptly with the obligations imposed by paragraph 1, paragraph 2 and paragraph 3 above and that the items supplied under paragraph 2 and paragraph 3 above are comprehensive; and]
5. To pay such damages or profits relating to our infringement of the Trade Mark by the application of the Sign to the Goods or Other Goods as may be agreed or in default of agreement, determined by the court.
[6. To pay your reasonable legal costs incurred in connection with our infringement of the Trade Mark by the application of the Sign to the Goods or Other Goods, to be assessed if not agreed.]
Yours faithfully,
...............................................................
A duly authorised signatory for and on behalf of [INFRINGING COMPANY]
...............................................................
[NAME IN BLOCK CAPITALS]