The Intellectual Property (Unjustified Threats) Act 2017
13 November 2017
The Intellectual Property (Unjustified Threats) Act 2017 came into force on 1 October 2017. The new law comes as the result of a consultation process triggered by the Law Commission in April 2013.
UK law provides for protection against groundless threats of infringement proceedings by the holder of a patent, trade mark, unregistered design right or registered design. It is worth highlighting that copyright and unregistered trade mark rights are still not subject to threats provisions.
For example, if a registered trade mark proprietor sends a letter to a seller of an allegedly infringing product, this threat could constitute an unjustified threat and a court action for unjustified threats for trade mark infringement could consequently arise. In this scenario, the threats provisions would not catch threats made to primary infringers (i.e. manufacturers or importers).
Where a threats action is successful, the claimant will be entitled to a declaration from the court that the threats lacked justification, damages and an injunction to prevent further threats.
The unjustified threats provisions have been subject to much scrutiny, as the resulting law change exemplifies, and seeks to balance the interests of IP rights holders when enforcing their rights and those of parties who may be subjected to unjustified threats.
The new regime attempts to make clear what right holders can communicate to alleged infringers and where threats to secondary infringers (e.g. retailers) would be justified.
These are the key changes:
- the test for determining what a threat is has been expressly set out in the Act: a communication contains a threat of infringement proceedings if a reasonable person in the position of a recipient would understand from the communication that an IP right exists, and a person intends to bring proceedings (whether in a court in the United Kingdom or elsewhere) against another person for infringement of the IP right by an act done (or to be done) in the UK.
- the threat no longer needs to be a threat to bring UK proceedings. The infringing acts must be done in the UK, but the proceedings may be brought in a different jurisdiction. There is also provision to ensure that the threats provisions will apply to the unitary patent.
- a threat would be deemed justified if it can be shown that the allegedly infringing act was or would be infringing.
- professional advisors are now immune from unjustified threats actions so long as they are making the communication on the instructions of another person, and that person is noted in the correspondence.
- where a communication is made for a “permitted purpose”, the rights holder can communicate with a person in circumstances that would be otherwise deemed an unjustified threat. This applies where the correspondence simply notifies an alleged infringer that a registered IP right exists and appropriate details of such rights are communicated in that correspondence, as well as clearly identifying the acts that are being complained of and how these could be deemed infringing.
Comment
An attempt to clarify the law in this area is welcomed. Like all new legal provisions, development through litigation and subsequent interpretation will be key to our understanding the full extent of the changes. That said, the law relating to unjustified threats is complex and none of the above affects the importance of seeking advice prior to sending correspondence that could be construed as a threat of infringement proceedings in relation to an intellectual property right.
If you require further information on anything covered in this briefing, please contact Mark Caddle (mcaddle@withersrogers.com; 44 20 7940 3600) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, November 2017
