Responding to an infringement letter

A letter alleging that your business infringes someone else's trademark, patent, design or copyright demands attention, but it does not demand panic. How you respond in the first days can significantly influence the outcome, so it pays to follow a calm and structured approach.

Step one: do not reply in haste

Infringement letters often set short deadlines and use forceful language. That is a negotiating technique as much as a legal requirement. A quick reply written without advice can contain admissions, accept facts that are not accurate, or give away arguments you will later need. It is usually better to acknowledge receipt, if appropriate, and take advice on the substance.

Step two: preserve your records

Gather and keep everything relevant to the product or sign in question: design files, launch dates, marketing materials, supplier correspondence and sales records. Evidence of when and how you began using a name or developing a product can be decisive, particularly if you may have a prior use argument.

Step three: examine the rights relied on

An infringement claim is only as strong as the right behind it. Key questions include:

• Is the right registered and in force where your activity takes place?
• Is the person writing to you actually the owner or an authorised licensee?
• What exactly does the right cover: which goods, services or technical features?
• Could the registration be challenged, for example for lack of distinctiveness, earlier rights, bad faith or non-use?

Step four: compare your activity with the right

For trademarks, this means considering how similar the signs and the goods or services really are, and whether customers are likely to be confused. For patents, it means comparing your product, feature by feature, with the claims. Many allegations stretch the scope of the right further than a court would accept.

Step five: consider your commercial objectives

The legally strongest response is not always the best commercial response. If the product is a minor line, a modest change in branding may end the matter quickly. If it is central to your business, a firm rejection backed by a counter-challenge to the other side's rights may be justified. Settlement terms such as a phase-out period or a co-existence agreement are often achievable.

Mistakes to avoid

• Ignoring the letter altogether, which may lead directly to proceedings.
• Contacting the other party informally and making concessions.
• Destroying stock or documents that might later be needed as evidence.
• Signing undertakings without understanding their full scope and duration.

How we help

We review the letter, the rights relied on and your position, and give you a clear assessment of the risk and the options. We then prepare a response that protects your position, whether that means rejecting the claim, negotiating terms or preparing for proceedings.

This guide is general information about intellectual property in Iran and is not legal advice. For advice on your situation, contact info [at] iraniplaw [dot] com.