Changes afoot in the law of unjustified threats
Wednesday, 21st September 2016
The 'unjustified threats' provisions set out in English statutes (and which are unique to intellectual property law) mean that one should tread carefully when making claims of trade mark, design and/or patent infringement by third parties.
In summary, if you make certain allegations against someone that they are infringing your design, registered trade mark and/or patent (or if you do so via your solicitor) and:
i There is no actual infringement of that intellectual property right; or
ii The intellectual property right asserted is not valid and/or can be cancelled,
then you could be making an 'unjustified threat'.
The recipient of such a threat, or any other person aggrieved, may make a claim against you (and/or your solicitor if they made the threat) seeking an award of damages in respect of any losses that resulted from the threat (e.g. loss of revenue), an injunction to stop you/your solicitor making such threats again and/or a declaration that the threats are unjustified.
The policy justification for the threats provisions is that the protection afforded by owning an intellectual property right should not be open to misuse, for example, by using the right to prevent legitimate competition.
Currently, the law of unjustified threats is far from perfect: The meaning of the word "threat" is arguably unclear; the threats provisions can be avoided by crafting infringement allegations carefully; the law is unnecessarily complex and there is inconsistency between the unjustified threats provisions for certain intellectual property rights and the equivalent provisions for other types of intellectual property rights.
The Intellectual Property (Unjustified Threats) Bill ("Bill") is currently passing through the legislative process. If enacted, the Bill will:
- Clarify what an actionable threat is
Under the new law, a threat would be any communication (e.g. a letter, telephone call or email) where a reasonable person in the position of a recipient would understand from the communication that:
i A registered trade mark (UK or EU*), registered or unregistered design (UK or Community*) and/or patent ("IP Right") exists; and
ii A person intends to bring infringement proceedings in respect of acts of infringement committed/to be committed in the UK of any of the IP Rights.
- Clarify what is not an actionable threat
Under the new law, it would not be a threat to contact a person for the sole purposes of:
i Giving them notice that an IP Right exists;
ii Discovering whether, or by whom, the IP Right has been infringed (but only in relation to certain limited acts of infringement); and/or
iii Notifying them that a person has a right in an IP Right, where the recipient's awareness of the right is relevant to any proceedings that may be brought in respect of the IP Right (for example, where the defendant must be on notice of the IP Right in order for the claim to succeed).
- Address the biggest criticism of the current law
In their current form, the unjustified threats rules permit threats of legal proceedings for acts of primary infringement (e.g. manufacturing and/or importing infringing articles), but not secondary acts of infringement (e.g. offering to sell, distributing or selling infringing articles).
Under the new rules, it will be permissible to threaten a person with legal proceedings in respect of any acts of infringement (e.g. selling infringing articles) if they have, or intend to, commit primary acts of infringement (e.g. making and/or importing of infringing articles).
- Harmonise the law
Subject to a few minor exceptions, the Bill will harmonise the unjustified threats rules across designs, registered trade marks and patents.
If enacted, the Bill will simplify the current law governing unjustified threats. The changes will mean that IP Rights owners will have more certainty over what they can (and cannot) say to infringers, when policing their IP Rights.
However, even after the Bill is enacted, if you are thinking of contacting someone who you believe is infringing your IP Rights, we strongly recommend that you discuss your concerns with a member of Ashfords' Intellectual Property Team, in order to avoid being caught out by the unjustified threats provisions.
*The implications of "Brexit" in this field are currently uncertain. Please refer to Ashfords' dedicated Brexit page for further information.*