June 1, 2016

A Blog – “Who are you Threatening?”

In December last year, Royds reported on the Government’s Intellectual Property (Unjustified Threats) Bill and I posted a blog “You Threatening Me?” that same month, explaining the current law on unjustified threats.

What’s the latest then?  The Government’s Bill; Intellectual Property (Unjustified Threats) Bill (“the Bill”), has now been published and has had its first reading.  The uncontroversial law will be fast tracked, so that it becomes law fairly quickly.  The date for the Bill’s second reading is however not yet known.

The Bill standardises the law on Intellectual Property so that the same threats provision applies across Patents, Trade Marks and Designs.  The safeguard that exists for Patents that allows a rights holder to communicate with a secondary infringer in certain circumstances, will apply to Trade Marks and Designs.

Does this mean I can threaten whomever I like, if I think they are infringing my Intellectual Property Rights?  Well no.  You must be sure of the facts.  Do you enjoy the rights you are asserting, and is the person you intend to threaten actually engaging in infringing activity?  Get either wrong and the recipient may apply to the Court for a Declaration that the threat lacks justification and be awarded damages, and an injunction to prevent further threats.

What the Bill will do is introduce the concept of “permitted communications” in Patent law to Trade Mark and Design law.  It will provide a means by which information can be exchanged in order to resolve disputes and so comply with the Pre-Action Protocols of the Civil Procedure Rules.  There are 3 conditions:-

  • The communication, so far as it contains information that relates to the threat, must be made solely for a permitted purpose.
  • All of the information that relates to the threat must be information that is necessary for that purpose.
  • The person making the communication reasonably believes that the information is true.

The communications may be given for the 3 ‘permissive purposes’ which are:-

  • Give notice that the IP Property Right exists.
  • Discover if the right is being infringed and by whom.
  • Give notice that a person has an interest in the right in circumstances where some other cause of action is dependent on another person’s awareness of that fact.

Does that mean I can ask a retailer to stop selling look-a-likes?  No.  What quite clearly cannot be done without constituting an unjustified threat is to demand an undertaking in relation to another’s products.  Exactly what constitutes a threat is not given statutory definition, in that it remains the law that a threat is made if what is communicated is understood by the ordinary recipient as being a threat of infringement proceedings.  It is not about you.  What you intended by the Notice is not relevant.  It is whether an ordinary recipient would think it a threat that counts.  So as welcome as the Bill will be when it is made law, not least the partial protection of professional advisers, the advice remains that Intellectual Property Rights owners must get the facts right and get legal advice before embarking on cease and desist letters, or any communication with alleged infringers.

Stephen Welfare is an expert in Intellectual Property Rights Disputes and for more information about Intellectual Property Rights generally, please contact Stephen at [email protected].

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