Changes to Unjustified Threats Provisions in the UK

You may be aware that a threat made to bring legal proceedings in relation to alleged infringement of a patent or registered trade mark may be actionable if it can be shown to be “unjustified”.  The threatened party may be awarded an injunction to prevent further threats, along with damages.

The legal provisions relating to such threats have recently undergone a change in a bid to simplify and improve the law, with the introduction of the Intellectual Property (Unjustified Threats) Act, which came into force in October 2017.

The new law sets out a test of what constitutes a threat, and this applies to patents, registered trade marks, registered designs and unregistered design right (but not copyright or unregistered trade marks).  The test is whether a reasonable person would understand that:

   an IP right exists; and
   a person intends to bring infringement proceedings in respect of that right by an act done, or intended to be done, in the UK.

There are various exceptions, which provide that under certain conditions, a communication sent to an alleged infringer will not be actionable, even if it clearly represents a threat.

Firstly, and most importantly, a threat is not actionable if it is made by a person who is a professional advisor (e.g. a patent or trade mark attorney) who is i) regulated by a regulatory body; and ii) acting on the instructions of their client, who must be clearly identified in the communication.  Note that this exception does not extend to the person on whose behalf the professional advisor is acting.

There are other exceptions, where the threat is aimed at a “primary infringer” (e.g. a party manufacturing a patented product; or a party applying a registered trade mark to relevant goods), or the threat is made for a “permitted purpose” (e.g. discovering whether, or by whom, an IP right has been infringed; or giving notice that an IP right exists).  In particular, any requirement that the alleged infringer for example “cease and desist”, or destroys an infringing product, will automatically mean that the threat is not for a “permitted purpose”, and cannot benefit from that exemption.

Whilst the new Act brings some welcome harmonisation to this area of IP, there remain several areas of uncertainty and it seems likely that case law arising from decided cases will continue to shape and define the interpretation of the legislation.

If you have any questions, please get in touch with your usual contact at Nash Matthews LLP.