06 Oct New rules for ‘unjustified threats’
On 1 October 2017 the Intellectual Property (Unjustified Threats) Act 2017 came into force. The Act simplifies this previously complex area of law which will hopefully encourage the owners of patents, trade marks and designs to enforce their rights.
An ‘unjustified threat’ is made when someone is unfairly threatened with legal action for infringing a patent, trade mark, registered design or unregistered design. Such a threat would be unfair when, for example, the act complained of falls outside the scope of a patent, ie it is simply not an infringement.
A person aggrieved by a threat can themselves issue court proceedings (an ‘unjustified threats action’) to seek a declaration that the threat is unjustified, an injunction to prevent a further threats, and damages, ie a monetary award. If a person has, for example, stopped selling a product upon receipt of a threat then their damages claim might be substantial.
The new ‘unjustified threats’ rules
The new law makes the situation much less complex by bringing the law in relation to trade marks and designs into line with that for patents. It is therefore now much easier to work out when a threat of infringement action could give rise to a potential unjustified threats action.
It provides clarity about when it is possible to completely avoid the potential of an unjustified threats action. In particular, if an infringement allegation is made to a ‘primary actor’, eg a manufacturer, then there is no possibility of an unjustified threats action being brought.
It is now easier to communicate with someone who might be entitled to bring an unjustified threats action for the purpose of exchanging information in order to resolve disputes.
The new law also protects professional advisers who will no longer be liable for making an unjustified threat. This is not only good news for us, as patent and trade mark attorneys, but also for clients as they will no longer have to provide an indemnity to their professional advisers. Most importantly though, it removes a tactical tool used by some infringers, which is to threaten an unjustified threats action against an adviser as a means of driving a wedge between them and their client and which can sometimes force a client to change adviser.
Are you worried about making an unjustified threat?
Although the new rules bring consistency and clarity to the potential risks of trying to enforce your patents, trade marks or designs, it is still a complex area of IP law and you should always seek professional advice before approaching an alleged infringer to ensure you are covered against unjustified threats.