21st September 2017
This year, intellectual property got a new advocate – the Unjustified Threats Act 2017. It’s brought in a select few (but very significant) changes to the existing UK intellectual property law, and adds an extra layer of protection to trade marks, design rights, and patents, but not where you would expect.
Liability can arise if a ‘threat’ is made concerning the infringement of intellectual property (which includes patents, design rights and trade marks). However, if that threat is perceived to be unjustified, then it can be challenged, especially if the person subject to any injunction feels that they have been aggrieved or had their business affected by such action.
They can, in response, claim damages, while the person making the threat has to prove that they in turn have had their valid rights infringed. This results in a lengthy slanging match in the courts that can take years to untangle, leads to heightened animosity between the two parties, and difficulty in reaching any kind of solution.
A threat could be anything from a cease and desist letter, publicising a dispute, or an online takedown notice. Up until now, the onus was very much on the party perceived to have infringed intellectual property rights, and in many cases compliance with a threat was easier than challenging it in court, even if there were no grounds for the threat.
However, the new legislation evens up the field a little, and gives those who have been accused of infringing intellectual property at least some method of response, especially if they feel that the threat is unjustified. Hence the name of the Act.
Up until recently, intellectual property law had become incredibly complex and full of potential loopholes, particularly when it came to patents versus design rights or trademarks. Now, the legislation is a little clearer, although like any IP legislation it is still filled with complex provisos and definitions. But put simply, it allows someone who is subject to a threat (for example, a takedown order or cease and desist letter) to have the right of response.
The definition of a threat has also had a revamp. Now, a new statutory test questions if a ‘reasonable person’ would understand that the person issuing the threat has IP rights, and that they intend to bring proceedings against a party for infringing those rights. So basically, has it been made clear that a person has valid IP rights, and is their threat to take action against a perceived infringement justified?
The definition of a threat as it stands in this legislation is, however, only in relation to acts done in the UK.
Threats, under the new law, can be made in relation to what are termed ‘primary acts of infringement’. This is anything that directly rips off property rights, such as manufacturing or importing, although now secondary acts such as sales are also covered.
There is also the option of avoiding issuing threats altogether, through the ‘permitted purposes’ roadmap. This essentially allows a rights holder to inform someone of their IP rights and is basically a chance for them to tell a potential infringer to ‘back off’ without actually issuing any kind of threat. However, these are potentially very muddy waters, and will need to be approached with extreme caution.
If you are going to issue a threat, the bottom line is that you will need to make sure that it’s absolutely justified, and that the legal representative you choose to act on your behalf is both highly experienced in IP law, and registered. The alternative is possible litigation for an unjustified threat, that could hit your pocket hard.
For further information on intellectual property please contact our Company & Commercial department on 01256 844888 or email firstname.lastname@example.org
The contents of this article are for the purposes of general awareness only. They do not purport to constitute legal or professional advice. The law may have changed since this article was published. Readers should not act on the basis of the information included and should take appropriate professional advice upon their own particular circumstances.
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