Mar 21, 2025 | The Different Effects of Issuing “Cease and Desist Letter” and “Writ of Summons”

1 When encountering infringement activities, the intellectual property owner (Owner) tends to send a warning letter (the term is Cease and desist Letter) to the infringers, requiring the infringers to stop the infringing activities, promising not to infringe on the intellectual property(“IP”) rights in the future, delivery of the infringing goods, disclosing the infringing act, and compensating for the losses and legal fees.

2 After receiving the Cease and desist Letter (“C&D letter”), most infringers will immediately stop the infringing activities (Situation 1). As for the other demands of IP Owner, the infringers tend to play the waiting game and not to respond.

3 However, not all infringers will stop their infringing activities after receiving a
C & D letter. This is especially true when the infringer is the well-spring (or close to the well-spring) of the infringing activity. They may immediately seek legal advice to see if there is any place to challenge the rights relied upon by the IP Owner, and use lawyers to buy time to clear out the infringing goods on their hands, and only make a commitment to the IP Owner at an appropriate time not to engage in infringing activities again (Situation 2).

4 In both Situations 1 and 2 above, issuing a C&D letter will indubitably bring certain benefits to the IP Owner. According to the writer’s experience, if the intellectual property owners put a pin in it, most infringers will come back and continue their infringement activities in different forms. The reason is that infringing activities can easily generate profits for the infringers.

5 For some intransigent infringers, or when the IP Owners are dissatisfied with the infringers’ responses, the Owners may consider filing “Writ of Summons” in the High Court to bring accusation against the infringers. Once a writ is filed, the Court proceedings begin. By then, Court proceeding will no longer be a unilateral but a bilateral procedure. Therefore, the writer recommends that IP Owners view Court proceedings not only from their own perspective, but also from the perspective of the infringers.

6 Indeed, Court proceedings would take two to three years, or even longer, to complete. This factor alone may frighten many IP Owners away from going to Court. In reality, this is only a small part of the truth. According to the statistics, not even one out of ten intellectual property Court lawsuits will take two or three years to complete the entire litigation process. On the contrary, most cases are completed within six months after the summonses are issued. Completion time entirely depends on the IP Owner’s requirements. The followings are the two most common methods to complete the entire Court proceeding in about half a year.

Method 1: Mediation

7 After the service of writ of summons on IP rights infringers, most of them (Defendants) will immediately stop the infringing activities and agree to a mediated settlement agreement with the owner (Plaintiff). Depending on the Plaintiff’s request, many cases can be settled within one or two months after the writ is served.

8 Through mediation, the Plaintiff can also transform the Defendant’s “termination commitment” into a “court injunction”. A “court injunction” is more effective in preventing the defendant from resurgence. Because if the Defendant commits the offense again, the Plaintiff can apply for committal. If the Defendant breaches the injunction, he or she will generally be punishable as contempt of court. If worse comes to worst, the Defendant may be sent to jail if he or she commit serious offence.

Method 2: Summary Procedure

9 Summary Procedure Application (Order 14 Application For Summary Judgement) is used when the Defendant in Court proceedings does not have an arguable defense. As long as the Plaintiff and the lawyer create deployment before filing the lawsuit, most Plaintiffs can apply through summary procedure, shortening the litigation process to a few months after filing the lawsuit. Through making summary application, the Plaintiff can obtain the same rights he or she obtains at trial, namely permanent injunctions, deliver up order, disclosure order, damages order and costs order.

10 On the basis of the above, the writer hopes that the Plaintiff will not miss out on his or her rights due to incomplete information. Certainly, before filing a lawsuit, the IP Owner needs to examine the case carefully with his lawyer.