On 28 January 2016, the government published its response to the Law Commission’s recommendations for reform relating to unjustified threats and on the proposed draft Intellectual Property (Unjustified Threats) Bill. The Law Commission is hopeful that the government will introduce the draft Bill in the next Parliamentary Session starting in April 2016.
Under the current law, those threatening proceedings for patent, design right and trade mark infringement can face an action for unjustified threats if the right claimed is invalid and the trader’s business has been damaged as a result of the threat. Professional advisers can be liable under the current legislation. A successful claim for unjustified threats results in damages and an injunction to prevent further threats.
The proposed changes would align trade mark law, design right law and patent law in relation to unjustified threats. There would also be provisions to protect professional advisers from unjustified threats claims.
The main changes include:
- extending the current exception in patent cases for threats made to a primary actor (e.g. a maker or an importer) to apply to trade mark and design cases.
- threats made to a person who applies a trade mark to goods or packaging will also fall within the exceptions to liability.
- new provisions for “permitted communications” which will not constitute actionable threats for trade marks, designs and patents. This will mean that rights holders can write to potential infringers to discover if the right is being infringed without fear of a threats action.
- new provisions which prevent threats actions being brought against professional advisers who act on instructions and who identify their client in the communication.
Should these provisions come into force, great care will need to be taken when drafting letters before action to potential infringers to ensure that the letter falls within one of the new exceptions.
Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.