The last twelve months has seen a global pandemic test, stretch and push UK businesses to the brink.  As things now steer towards normality and the economy starts to get back on track, arguably there has never been a more crucial time to protect one’s intellectual property rights from infringement by competitors or protect one’s business from unjustified threats.

October this year will mark four years since the Intellectual Property (Unjustified Threats) Act 2017 (the Act) came into force.  The aim of the Act was to reform the law in this area by clarifying ambiguities and harmonising the unjustified threats provisions across patent, design and registered trade mark law.

We are therefore paying a quick revisit to this area of IP law, to remind our clients and businesses of its complexities and of the importance of seeking professional legal advice before communicating with potential infringers or responding to accusations of infringement.

What are the main features of the Intellectual Property (Unjustified Threats) Act 2017?

The Act provides:

• a definition of what constitutes a threat based on what a reasonable person would understand from a communication. This ensures that the intention of the provisions cannot be circumvented merely by avoiding any explicit threat to bring infringement proceedings. The provisions cannot bA reminder to seek professional advice before communicating with potential IP infringers or responding to accusations of infringement

  e avoided by using clever wording and legal jargon. Whilst statements such as ‘cease and desist’ and ‘provide undertakings’ do not expressly threaten infringement proceedings, they would amount to a threat for the purposes of the Act;

• that threats are not actionable if made to a person who has done or intends to do a primary infringing act (i.e., a person who manufactures or imports goods, supplies the services or applies a trade mark to goods or their packaging). This allows full grounds for complaint to be set out to alleged primary infringers without fear of making an actionable unjustified threat;
• that certain “permitted communications” are excluded from being actionable. This enables enquiries to be made to attempt to identify a primary infringer without making a potentially actionable threat and facilitating certain pre-action correspondence in general;
• the ability to bring infringement proceedings against a secondary infringer (e.g., a retailer) where, in spite of reasonable steps having been taken, a primary infringer cannot be identified; and
• a prohibition (under certain circumstances) on bringing an action for the making of unjustified threats against a professional adviser. This helps to maintain good client/legal advisor relationships and makes it even more important to seek legal advice before threatening action for infringement.

Since October 2017, the Act has certainly struck a better balance between enabling rights holders to enforce their rights and protecting individuals and commercial entities from unjustified threats.

Whilst the reforms have been welcomed, this is still a complex area of IP law.  Advice should therefore be sought before making an approach to an alleged infringer, whether in writing or verbally or before responding to a threat of alleged infringement.  The consequences of making an unjustified threat can be commercially and financially burdensome for the rights holder.  Unnecessarily succumbing to an unjustified threat can also be damaging to businesses.

We have extensive experience in the enforcement of IP rights and defending allegations of infringement. So, if you suspect that your rights are being infringed or are in receipt of an allegation of infringement, please contact us for advice.