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Unjustified threats: the time for change is now

On 1 October 2017, the principal provisions of the Intellectual Property (Unjustified Threats) Act 2017 (the Act) come into effect. This Act makes some substantial changes to the way in which holders of relevant intellectual property (IP) rights may approach third parties which they think are infringing their IP rights with fear of a legitimate threats action. We set out here the main things you need to know.

Background and the Need for Change

Threats provisions were introduced in the UK over 100 years ago to reduce, if not eradicate, overzealous IP rights holders threatening to sue third parties for IP infringement. If a threat was found to be an unjustified threat, the aggrieved recipient was entitled to remedies including an injunction to prevent further threats and damages to address any losses (including loss of profits). The Law Commission’s report in 2012 concluded that the law of unjustified threats was failing to achieve a balance between allowing IP rights holders to assert their rights against a third party and at the same time providing redress for IP threats which were not carefully considered and justified.

Aims

The Act has three key aims:

  1. To protect recipients against the misuse of threats to bully or unfairly obtain a commercial advantage.
  2. To simplify the relevant rules.
  3. To bring greater consistency in the way the unjustified threats provisions apply to different forms of IP (the threat provisions have related, and continue to relate, only to patents, trade marks and designs).

The New Law

In essence the new test is twofold, namely:

Part One: whether a reasonable person would understand from the communication that a patent, trade mark or design exists.

Part Two: whether the reasonable person would understand that a person intends to bring proceedings against another person for infringement of the right by an act done in the UK.

Key Changes

In some ways the new test merely brings into statute that which was accepted through case law. However, the following key changes should be noted:

Take-Home Points

While there is still much to consider before communicating a claim that someone has infringed a patent, trade mark or design, the change in the law is to be welcomed. It brings consistency to the way in which the rules apply to relevant IP rights and should make the rules easier for rights holders and professional advisors to apply in practice.

Will Sander is a UK/European Trade Mark Attorney and IP Solicitor who regularly advises clients on the enforcement of their IP rights.

For further information please contact:

This article is for general information purposes only and does not constitute legal or professional advice. It should not be used as a substitute for legal advice relating to your particular circumstances. Please note that the law may have changed since the date of this article.

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