Demand the other party stops infringing

This IP First Response website has been designed to help IP rights holders navigate IP infringement and enforcement by making it visible, accessible, and to provide information about the factors involved in pursuing different options. It does not provide legal, business or other professional advice, and none of the content should be regarded as recommending a specific course of action. We welcome any feedback via our IP First Response feedback form and by emailing us.

What is it?

A letter of demand, or a cease and desist letter, can be an effective way of stopping infringing behaviour and avoiding the need for legal action. You can use this letter to communicate your concerns and demands. It’s often one of the first actions taken if you are satisfied that an infringement is occurring.

An effective letter of demand will:

identify your ownership of the IP right and whether you are entitled to make requests to cease infringement
document the infringing conduct, with written examples if possible
specify the legislation under which your IP is being protected
give a specific timeframe for the infringer to stop infringing, return all infringing property to you
state that if the demands aren't met, you may take further actions to stop the infringing behaviour.

Before sending a letter of demand, it’s a good idea to consider whether the other party’s actions amount to infringement. There can be serious consequences if you send a letter of demand with no basis, and court can order an injunction and/or damages under unjustified threat provisions. An IP attorney can help you make this assessment and draft the letter.

For more information about what constitutes an infringement, see our information IPFR: What Constitutes Infringement.

What are the benefits?

Cost-effectiveness.
Quick to action.
Simple to prepare and initiate compared to other enforcement options.
Reasonable likelihood of stopping infringing behaviour without the need for additional steps – 43.7% of respondents, who are patent holders, found it effective at stopping copying behaviour (Weatherall K and Webster E (2010) ‘Patent infringement in Australia: Results from a survey’, Federal Law Review, 38, 21-70, 40.)

What are the risks?

Making an unfounded claim of IP infringement is legally prohibited and may result in liability for any damages.
Including unreasonably onerous and aggressive terms in your letter (e.g. short time frames, demands that do not relate to the IP in question, etc) may prompt the other party to escalate and resist, rather than comply.
There is a risk that taking this action could require you to defend/establish your claim to your IP rights. The ruling might not go your way, or the other party could file a counter-claim/action.
In rare cases, a letter of demand might give the infringer time to hide or destroy evidence and prejudice your case against them. If you are worried about this possibility, you may consider escalating the conflict to more formal enforcement options.

What are the possible outcomes?

Sending a letter of demand can result in a wide range of different outcomes depending on the specific circumstances.

Some possible outcomes are:

The alleged infringing behaviour stops upon receipt of the letter, especially if the recipient was simply unaware of existing IP rights.
The alleged infringer does not change their behaviour, in which case you may have to consider other enforcement options.
Parties can engage in further correspondence disputing part or all of your claims.
The conflict can further escalate into more serious, formal dispute settlement procedures (i.e. litigation, arbitration, administrative hearings, etc.).
The other party may not fulfill all the requirements but may be willing to participate in some form of negotiation.

What might the costs be?

If you engage an IP professional to give you legal advice and draft a letter for you, fees will be incurred for their service. While fees for legal services would vary depending on the complexity of the issues at hand, the fees for drafting a letter of demand would generally sit somewhere between $80 to $2000.

There can also be some administrative fees involved in drafting, printing and posting the letter of demand.

How might time might be involved?

Sending a letter of demand is generally considered to be a quick and simple enforcement option.

The amount of time required for sending a letter of demand will vary depending on the complexity of the infringement and whether you choose to engage an IP professional to act on your behalf.

Though it is entirely up to you to determine how much time the other party can take to comply with your demands laid out in the letter, it is common to request action is taken within a short period such as “10 business days”.

Who can use this?

Anyone whose IP is being infringed.

Who’s involved?

IP right owner/s or authorised users of IP.
Alleged infringer(s).
(Optional) IP professionals acting on parties’ behalf.

What do you need to proceed?

It's a good idea to get all the factual details right and evaluate the merits of your claims before you send out a letter of demand, so as to give yourself the best chance of success. Here are some things to check and consider before drafting your letter:

The status and details of the relevant IP in the jurisdiction where infringement occurred. This includes checking the status of your IP registrations, and whether the alleged infringer has registered IP rights with IP Australia or overseas IP offices.
Whether the other party’s conduct amounts to infringement, having regard to the scope of your IP rights – For instance, what kind of goods and/or services is your right in relation to, and does the other party’s conduct have anything to do with those goods and/or services or something adjacent to it? Make sure your claims do not amount to baseless accusations which would be seen as unjust threats.
The identity and contact details of the alleged infringer. It’s important to make sure you serve the correct party.
Are there any other less confrontational and more informal ways to contact the other party before sending out the letter?
Will you be prepared to be engaged in further correspondence, negotiation or even disputes with the other party?

It can be difficult to determine whether the other party’s behaviour amounts to infringement. An IP attorney can help you make this assessment and advise what steps would work best in your situation.

Exercise caution before making accusations of infringement

Making an unfounded claim of IP infringement can result in liability for damages. Proving infringement is an important issue that should be considered before taking legal action, including sending written demands.

Before you take any action, you should consider whether you need legal or professional advice specific to your situation. It is important to know what rights you have, what remedies are open to you, and the cost and likelihood of success. IP Australia provides information on getting professional assistance with your IP. In addition, the Institute of Patent and Trade Mark Attorneys Australia (IPTA) offers free 30 minute consultations with an attorney.