Change of rules on unjustified threats

Outside specialist lawyer/IP practitioner circles the risks or benefits of legal action against unjustified threats are little known. This cause of action is only applicable to intellectual property infringements and even specialists have had difficulty analysing what is, or is not, a threat.

In essence, if a rights owner (patent, design, trademark but not copyright) communicates with another and in that communication indicates expressly or by implication that it is an owner of a right that is being infringed by the other and that legal proceedings may follow if the infringement does not cease, that is generally “an actionable threat.”

In those circumstances “a person aggrieved”—perhaps the manufacturer of the goods, or the person applying the infringing trademark—has an action against the threatener for a restraining order, costs and damages, and until recently, against the solicitor who wrote the threatening letter.

The logic behind this is that even groundless threats against, say, retailers, could frighten them away from the products in question and it is the manufacturer who ultimately suffers.

Those writing to a corner shop asking it to cease stocking an allegedly infringing product will be unpleasantly surprised to find themselves embroiled in very expensive legal proceedings with a global food manufacturer. Even more concerningly, a polite letter to the global food manufacturer might be interpreted as threat and by issuing a claim for unjustified threats the global food manufacturer can force the letter writer into costly proceedings to prove that there is an actual infringement.

Fortunately that risk is now reduced by the Intellectual Property (Unjustified Threats) Act 2017 which received the Royal Assent on 27^th April 2017 and is expected to have effect towards the end of the year. It removes the risk of unjustified threats from the maker when those threats are only directed to the “primary infringer”—the manufacturer of goods, user of the process, importer etc. It also attempts to clarify various other points in the current law which have caused confusion in the past.

The rules are still not entirely straightforward and anyone intending to issue a letter to an interested party claiming that there is an infringement should first consider carefully the revised rules in the Intellectual Property (Unjustified Threats) Act 2017, and ideally take expert legal advice first.

For more details on the change of rules regarding unjustified threats, you can contact Geoffrey Sturgess at geoffreysturgess@warnergoodman.co.uk or call 02380 717717.

ENDS

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