After registering your trademark in Nigeria, you may discover that it is being infringed. This is not unusual. One option you do have before resorting to litigation is to send a cease and desist letter requesting that the infringement immediately stop.
What is a Cease and Desist Letter
A cease and desist letter puts a person or business on notice that they are engaging in an illegal activity, and if they do not stop, you intend to pursue legal action.
Things to Consider Before Sending a Cease and Desist Letter
As a lawyer, you may want to consider a few things before sending a trademark cease and desist letter. Some things to consider are listed below:
- Conduct your own due diligence to better understand your client’s claim and potential consequences of sending the letter. It is important to weigh your client’s claim and legal ramifications.
- Your due diligence should provide information that allows you to confirm your client’s prior use of the mark in question.
- Consider the likelihood of confusion that may or may not exist between the two marks and whether the infringing party may have potential defenses.
- Also consider other options that may be available to you other than a cease and desist letter.
Basic Contents of a Cease and Desist Letter
- Explanation of the Trademark Owner’s Rights: It is important to provide a detailed explanation of the trademark owner’s rights. You need to provide information that identifies the trademark owner’s business, trademark and any relevant marks registered with the Trademarks, Patents and Designs Registry in Nigeria. For example, you may state “our client is the owner of the trademark [INSERT TRADEMARK NAME] registered on [INSERT DATE] with the Trademarks, Patents and Designs Registry in Nigeria under registration number RTM [INSERT NUMBER] in Class [INSERT CLASS]”.
- Description of the infringing activity and degree of similarity, or overlap between your client’s goods/services and the other party’s goods/services: For example, you may state “recently our client’s attention was drawn to your product [INSERT NAME], which bears a design that closely mimics the style, color combination, and distinctive elements of our client’s trademark. The images of our client’s trademark and products as well as yours are depicted below (side by side) for ease of comparison .”
- Advertisement and Market Position: The letter should provide a statement that addresses the length of use, advertising, public recognition, goodwill, market position, etc., of your client’s trademark. The statement should also address any overlap in trade and advertising channels.
- Confusion by Customers and Clients: The letter should include a statement detailing evidence of customer or client confusion. You need to consider the likelihood of confusion before moving forward with sending a cease and desist letter.
- Response Time: The letter should include a time period in which response is requested.
- Disclaimers: The letter should include a disclaimer that the letter does not constitute a complete declaration of all of your rights, whether they be stated or unstated.
- Request or Demand of Action: The letter must state that the trademark owner is requesting that the infringing activity immediately stop and also provide some potential consequences if the infringing activity continues. For example, you may state “we hereby demand that you immediately cease and desist in any additional use of our client’s trademarks that will likely cause misrepresentation in relation with distribution, advertising, identification, and sales of our products or services. If you fail to comply with the aforementioned demand(s) within 30 days, we will have no choice but to pursue all legal cause of action, including filing a lawsuit to protect our client’s interest”.
If you need assistance filing trademarks in Nigeria, please email firstname.lastname@example.org. This article is intended to provide general information about the subject matter. Professional legal advice should be sought about specific circumstances.