Letter of demand for trade mark infringement
Someone is using your brand. What a letter of demand is in South Africa, when it works, what it has to contain – and the two mistakes that hand the other side their answer.
A letter of demand is a written demand that someone stop doing something, or put something right, before you go to court. In South Africa it is what people call the letter that elsewhere gets called a cease and desist. Same instrument, local name.
Most letters of demand in this country are about money – an unpaid account, arrear rent, school fees, a National Credit Act section 129 notice. That is debt collection, and it is not what this page is about. This page is about the other kind: someone is using your brand, and you want them to stop.
If your matter is a debt, you want a debt-collection attorney and a magistrates’ court process. We will say so rather than take the file.
First question: do you actually have a case?
A demand is only as strong as the right behind it. If you hold a South African registration, section 34(1) of the Trade Marks Act 194 of 1993 gives you three separate grounds, and they are not interchangeable. Which one you are on decides what you have to prove.
Registration is not the only right that can carry a demand, and in practice it is rarely the only one in play – passing off, unlawful competition, copyright, the advertising code, their company name and their domain all sit alongside it. Those are set out below. Start here, because the registered grounds are the ones with the clearest remedies.
| Ground | What it covers | What you must show |
|---|---|---|
| s34(1)(a) | Their mark is identical to yours, or so nearly resembles it as to be likely to deceive or cause confusion, used on the goods or services you registered for | Unauthorised use in the course of trade, and a likelihood of deception or confusion |
| s34(1)(b) | Their mark is identical or similar, used on goods or services so similar to yours that confusion is likely | Similarity of marks and similarity of goods or services, plus the likelihood of deception or confusion |
| s34(1)(c) | Dilution. Their use of an identical or similar mark takes unfair advantage of, or is detrimental to, the distinctive character or repute of your registered mark – on any goods or services. Blurring, tarnishment or free-riding | That the other sides use of your mark may lead to an unfair advantage (to the other side) or detriment (to you) by relying on its existing advertising power. This ground applies notwithstanding the absence of confusion or deception |
The third ground, dilution, is a bit more complicated. It it is the only ground that does not require showing that consumers are likely to be confused or deceived into believing that the respective marks in question are associated – meaning that the goods or services do not need to be similar.
Our courts have kept the bar high. In Laugh It Off v SAB the Constitutional Court required a likelihood of substantial economic harm, and in Adidas v Pepkor the SCA refused the claim for want of proof that distinctiveness had been eroded. Harms JA put it plainly: the advantage must be unfair, sufficiently substantial, and proved. National Brands v Cape Cookies (2023) has since moved the line towards unfair advantage on its own, but the evidentiary burden is still high. We have written the full history in trade mark dilution in South Africa.
No registration? You are not without rights
South Africa is first to use, not first to file. An unregistered mark that has built a reputation is protected by the common law delict of passing off, and a demand can be founded on it. You have to show three things:
- Reputation. The mark distinguishes your goods or services in the minds of a substantial section of the public.
- Misrepresentation. Their use is likely to lead people to believe their goods or services are yours, or connected with you.
- Damage, or the likelihood of it. Lost sales, or harm to the reputation itself.
Passing off is harder and more expensive to run than infringement, because you must prove the reputation that a registration would simply have given you. It works, but it is the reason a registration pays for itself the first time someone copies you.
Separately, section 35 protects marks that are well known in South Africa under the Paris Convention even where the owner has no business or goodwill here – the route a foreign brand uses against a local copycat.
The other grounds a demand can rest on
Trade mark infringement is one arrow. Most real disputes have more than one, and a demand that names every ground the facts support is far harder to shrug off than one resting on a single section. These are the ones that come up in South African practice.
| Ground | Where it comes from | When it works |
|---|---|---|
| Passing off | Common law (a species of the delict of unlawful competition) | They misrepresent their goods or services as yours, or as connected with you. Needs reputation, misrepresentation and damage. Works without any registration. |
| Unlawful competition | Common law delict | Wider than passing off, and catches conduct that is wrongful and causes you loss without anyone being confused – leaning on your reputation, misappropriating the fruits of your work, misleading the market about your product. |
| Copyright | Copyright Act 98 of 1978 | Your logo is an artistic work; your website copy, product photographs and packaging artwork are protected too. No registration exists or is needed. The trap: if a designer made your logo, the copyright usually belongs to them unless it was assigned to you in writing. |
| Advertising Regulatory Board | ARB Code of Advertising Practice | Use on social media and elsewhere is advertising under the Code. The grounds that bite are exploitation of your advertising goodwill and imitation. Fast and cheap, but note the ARB binds its members – against a non-member it can direct that members refuse the advertising rather than order the advertiser directly. |
| Counterfeit Goods Act | Act 37 of 1997 | For actual counterfeits, not merely similar marks. Opens search, detention and seizure through SARS and the inspectorate, and it is criminal in nature. Needs a registered trade mark or copyright behind it. |
| Their company name | Companies Act 71 of 2008, ss 11(2) and 160 | A company name that is confusingly similar to your mark can be attacked at the Companies Tribunal, which can order a name change. Bear in mind that a company name does not provide trade mark rights – though a trade mark registration can prevent use of a conflicting company name. |
| Their domain name | ECT Act 25 of 2002 regulations (.co.za) / UDRP (.com and other gTLDs) | An abusive registration can be transferred or cancelled through an ADR process rather than a court. Much faster than litigation where the domain is the real problem. |
| Their registered design | Designs Act 195 of 1993 | Where the copying is of shape, configuration or get-up rather than a name. |
| Attacking their registration | Trade Marks Act, s 10 | If they have already registered, expungement runs alongside the demand: s 10(7) where the application was made mala fide, s 10(12) where use would deceive or confuse, s 10(16) where it is contrary to your existing rights, s 10(17) dilution at the registration stage. |
Pleading them together is the point. A single set of facts often supports infringement, passing off and unlawful competition at once, with a company-name application and a domain complaint running beside them. Each has a different forum, a different cost and a different speed – the Companies Tribunal and a domain ADR are cheap and quick, a High Court interdict is neither – so the question is not only what you can claim but which route actually gets the result you want.
Naming a ground you cannot support does the opposite. Every extra claim is another thing the other side’s attorney gets to attack and a demand that overreaches on one ground may lose credibility on others.
Counterfeits are a different route, and a sharper one
If what you are facing is not a similar brand but a fake of your product, the Counterfeit Goods Act 37 of 1997 opens a route that ordinary infringement does not. It is worth knowing when to reach for it, because it cuts in both directions.
The bar is higher. Ordinary infringement asks whether use is likely to deceive or cause confusion. Counterfeiting asks something narrower: deliberate and fraudulent imitation, where the infringer is reproducing and substituting for the goods themselves, not merely adopting a similar name. Counterfeiting is a criminal matter, and the test reflects that.
What you get for clearing it. Search, detention and seizure through the inspectorate and SARS at the port of entry – goods stopped before they reach the market, which no interdict against a trader can achieve. It needs a registered trade mark or a copyright behind it.
And the risk of reaching for it wrongly. A complainant who uses the Act to pursue what is really an ordinary infringement claim can find the detention set aside and be met with a claim for the storage costs of the goods it wrongly caused to be held, on top of the underlying dispute. The Act is a weapon against fakes, not a shortcut around the infringement test.
Where the fakes are being sold through a marketplace rather than imported, the question becomes what the platform itself must do once it has been notified. We have written that up at length: the liability of retail platforms for counterfeit goods in South Africa and a South African online-marketplace case study.
What the letter has to contain
A demand that cannot be acted on gets ignored. The ones that work are specific, provable and narrow.
- Exactly what you own. Registration number, class, and the specification – the actual list of goods or services. Not “we own the name”. A filed class is not a blanket right over everything in that class.
- Exactly what they are doing. Dates, URLs, screenshots, listings, packaging, invoices. Attach it. A demand without evidence reads as a guess.
- Which ground you rely on. Naming the subsection tells the other side’s attorney you have thought about it, and it stops you sliding into a claim you cannot prove.
- What you want, precisely. Stop using the mark; remove it from named listings, packaging or signage; transfer a domain or a social handle; a written undertaking not to repeat; delivery up of infringing material; and, where it is worth pursuing, an accounting.
- A deadline that is reasonable. Long enough that a court would call it fair, short enough to mean something. Depackaging a product line is not a 48-hour job.
- What happens if they do not comply. Say it once, plainly, and be willing to do it.
On “without prejudice”. A letter of demand without prejudice keeps any settlement proposal in the letter privileged – and lets you offer concessions that may invite resolution outside of court. The trade-off is is that a “without prejudice” privileged” letter cannot later be handed to a court to show that the infringement was brought to the other side’s attention and ignored, which is often what you want it to do on costs.
Which one fits depends on whether you are mainly building a record or mainly trying to settle – and that is a judgement call to make before drafting, not after.
The two mistakes that turn a strong demand into a weak one
1. Overclaiming registration.
Section 62 makes it a criminal offence to represent that a mark is registered when it is not, that part of a mark is separately registered when it is not, or – the one that catches people – that a registered mark is registered in respect of goods or services for which it is not registered. The penalty is a fine or imprisonment of up to 12 months. Using the ® symbol on an unregistered mark falls under the same section.
So a demand that says “our mark is registered and you may not use it for anything” when the registration covers class 25 clothing and the other side sells software is not merely ambitious. Get the specification right and quote it.
2. Provoking the counter-attack.
A demand puts your own registration in play. Two answers come back most often:
- Non-use removal. Under section 27(1)(b), once five years have run from the date of issue of the certificate (the registration date), an interested person can apply to remove your mark for the goods or services on which it has not been genuinely used. If you are demanding across a specification you never used, you are handing them the application.
- Vested rights. Section 36 protects a person who has made continuous and bona fide use of the mark from a date earlier than your use or your registration, whichever came first. If they were there before you, your registration does not let you stop them.
Both are worth checking before the letter goes out, not after the reply arrives.
What you can actually get
If the matter goes past the letter, section 34(3) sets out what a High Court with jurisdiction may grant:
| Relief | In practice |
|---|---|
| An interdict | An order to stop. This is the relief that matters in most brand disputes, and usually the whole point of the exercise. |
| Removal or delivery up | An order to remove the infringing mark from all material – and where it cannot be separated from the material, to deliver the material up to you. |
| Damages | Including damages for acts done after your application was advertised as accepted, which would have infringed had the mark already been registered. |
| A reasonable royalty instead | At your option, in lieu of damages: what a licensee would reasonably have paid to use the mark. Often far easier to prove than lost profit. This can be claimed from the date of advertisement of your application for registration. |
Where the amount is in dispute, section 34(4) lets the court direct an enquiry into damages or the royalty rather than deciding it on the papers.
One procedural trap: under section 34(5), before instituting proceedings you must give written notice to every registered user recorded against the mark, and they may intervene and recover their own damages. Check the register entry before you issue.
What usually happens after you send it
- They comply. The most common outcome by a distance, particularly where the other side chose the name without checking and has little invested in it.
- They negotiate. A coexistence agreement, a narrowed use, a phase-out period, a change of get-up. Often the commercially right answer, and much cheaper than an interdict.
- They deny. Usually on vested rights, on the specification not covering their goods, or on the marks not being confusingly similar. Now you know what you are fighting.
- Silence. Then the decision is yours: escalate to the platforms, or apply for an interdict. Do not send a second identical letter – it teaches them the first one meant nothing.
The platform route is often faster than the court route. Marketplaces, app stores and social platforms all run trade mark complaint processes, and a registration number is usually all they require. It will not get you damages, but it can get the listing down in days. A registered mark is what makes that door open.
What it costs
A letter of demand is quoted before it is written, as a fixed fee, once we have seen what you own and what they are doing. The work is the investigation – confirming the scope of your registration, checking your own use against section 27, and looking for an earlier user – rather than the drafting.
It is a small fraction of what an interdict application costs, and it is where the large majority of these matters end. If it does not end there, nothing in the letter should be anything you would not be willing to stand behind in court.
If the infringement was found by our watch service, we will already have the register position and the evidence, and will say so in the quote.
Frequently asked questions
Is a letter of demand the same as a cease and desist letter?
Yes. “Cease and desist” is American terminology that has spread through the internet. In South African practice the letter is called a letter of demand, and that is what an attorney here will call it. The content and effect are the same.
Do I need a registered trade mark to send a letter of demand?
No, but it changes what you are relying on. With a registration you can demand on the strength of section 34 of the Trade Marks Act. Without one you are relying on passing off, which means proving your reputation, their misrepresentation and your damage – all facts you have to establish, where a registration would simply have been produced.
South Africa is first to use, so an unregistered mark with a real reputation is genuinely protected. It is just slower and more expensive to enforce. And a demand rarely rests on one ground alone – copyright in your logo, the advertising code, their company name and their domain are all available whether or not you hold a registration.
Can a letter of demand be sent by email?
Yes. There is no rule requiring a trade mark demand to be served in any particular way, and email is now the normal channel. What matters is proof that it reached the right person: send it to a documented address, keep the delivery record, and where the matter is serious, send it by a second route as well.
This is different from a National Credit Act section 129 notice, which has its own statutory delivery requirements. That is debt enforcement, not trade mark work.
What is the next step after a letter of demand?
If they comply, you record the undertaking and diarise a check. If they negotiate, you are into a coexistence or phase-out agreement. If they refuse or ignore it, the next step is an application to the High Court for an interdict under section 34(3), and in parallel a takedown complaint to any platform carrying the infringing listing.
What you should not do is send the same letter again.
How long do I have to act?
There is no deadline for sending a demand, and each new act of infringement is a fresh wrong. But delay costs you in two ways: it undermines any argument that the matter is urgent when you ask for an interim interdict, and a long period of knowing about the use and doing nothing can be raised against you.
If you have just found out, act now. If you have known for two years, say so when you instruct us – it changes the strategy, not the merits.
Can they come after me for sending a demand?
They can answer it, and a badly built demand gives them the material. The two standard replies are an application to remove your mark for non-use under section 27 and a defence of vested rights under section 36. And a letter that misrepresents the scope of your registration engages section 62, which is a criminal provision, not merely a bad look.
This is the argument for checking your own position before the letter goes out rather than after.
They were using the name before I registered. Can I still stop them?
Generally not, for the use they were already making. Section 36 protects a person who has made continuous and bona fide use of the mark from a date earlier than your first use or your registration, whichever came first. Your registration does not reach back over them.
It does still stop everyone else, and it may still limit how far the earlier user can expand. The practical answer is usually a coexistence agreement that fixes the boundary while both sides still want one.
Related guides
- What is a trade mark?
- When you may use ™ and ®
- Trade mark opposition: procedure and costs
- What trade mark registration really costs
- How CIPC registration works (and the DIY route)
- Trade mark glossary: every term explained
Sources
- Trade Marks Act 194 of 1993 (PDF) – sections 27, 34, 35, 36 and 62 are the ones cited above
- Trade Mark Regulations (PDF)
Written and reviewed by
Stephan Viollier – Trade Mark & IP Attorney, SAIIPL-certified, admitted in South Africa and the United States (New York)
This page explains South African trade mark practice in general terms. It is information, not legal advice on your particular mark – for that, talk to us.
Someone using your brand?
Send us what you have found and what you own. We will tell you which ground you are on, whether the demand is worth sending, and what it will cost before anything is drafted.
