In the UK, a person who is threatened with an action for infringement of intellectual property rights (either Patent, Design right or Trademark) can sue the ‘threat maker’ where the threat is unjustified, or groundless. A threat would be considered unjustified if it is made in a situation where there is no valid right, or where there has been no infringement.
This provision can be problematic for IP rights holders seeking to enforce their rights. However, there is about to be a change to the law in the United Kingdom regulating unjustified threats within the IP sector. These changes will be delivered in The Intellectual Property (Unjustified Threats) Act 2017, which received Royal Assent on 27 April 2017, and is expected to pass into law in October, this year.
This article aims to reiterate what you need to know about unjustified threats and summarise the important changes created by this new Act.
1, A new test for establishing whether a communication constitutes a threat:
The Act provides a new test for establishing whether a communication constitutes a threat. The test is as follows:
- Through the perspective of a reasonable person in receipt of a communication.
- The reasonable person must construe that an IP right exists
- The reasonable person must construe that someone intends to bring infringement proceedings.
- The communication must be in respect to a potentially infringing act done in the UK, or if done, would be done in the UK.
If these criteria are met then a threat has been made, if this threat is unjustified then an action may be taken against the threat maker.
2, Changes to whom may bring an action
Under the new provision an action cannot be brought if the threat relates to “primary infringement”. What constitutes “primary infringement” varies between the different IP rights, but often includes the manufacture or importation of goods. If a threat of infringement proceedings is made against someone who is a ‘primary infringer’ then no action can be brought against the threat maker. Under the new regime it is also possible where an act of primary infringement has occurred, to threaten proceedings in respect of related “secondary infringing” acts (such as the sale of goods).
3, Introduction of the concept of permitted communications:
The new legislation introduces a list of permitted communications, these are forms of communication which may not be construed as an unjustified threat, providing they are made for a permitted purpose. Permitted purposes include; giving notice that a right exists, and necessary correspondence to establish if the right is being infringed.
4, Professional advisors’ exemption
An additional provision being introduced under the new legislation, makes it is no longer possible to bring an unjustified threat action against professional advisors, barristers, solicitors and IP Attorneys, acting on behalf of a client.
In Summary
The new legislation does not wholly dispense with the potential issues arising for IP right holders seeking to enforce their rights; they remain at risk of actions alleging threatening behaviour. However, the bias extant in the previous law, has been partially redressed. Doubtless, the incoming Act highlights the importance of seeking specialist advice when confronted with need enforce IP rights against a potential infringer. Here at Albright IP we are fully equipped to help your business navigate this complex area of law.