► Court finds that Logitech Europe S.A made a groundless threat to bring proceedings against Tech 21 UK Limited for infringement of design rights in an iPad protection case

► Test for groundless threats confirmed as an objective test, based on whether the threat suggests that infringement proceedings would be brought in the UK immediately or at some point in the future

► High Court had jurisdiction to hear the groundless threat claim but not to make a declaration of non-infringement of the relevant Community unregistered designs

What's it about?

Tech 21 UK Limited (Tech) and Logitech Europe S.A (Logitech) make impact protection cases for iPad. Tech received a letter from a German law firm acting for Logitech alleging that Tech's "Impact Folio" protection case infringed Logitech's Community unregistered design right in its "Big Bang" protection case.

Tech issued proceedings in the UK seeking declarations:

► That Logitech had made a groundless threat to bring infringement proceedings; and

► Of non-infringement of any Community unregistered design right belonging to Logitech

If a threat of infringement proceedings is made in relation to a unregistered design, the person who receives the threat is entitled to seek relief from the courts where the threat is unjustified and infringement cannot be proved.

However, in this case, the court first had to determine whether it had jurisdiction in relation to the declarations sought by Tech.

Why does it matter?

The basic position is that a Defendant is entitled to be sued in its home court (i.e. in the courts of the state in which it is domiciled).

The court has applied this principle as follows:

► As to whether Logitech had made a groundless threat, the question was whether a reasonable person (in receipt of appropriate legal advice) would believe that infringement proceedings in the UK were a possibility. The court held that, even though proceedings in Germany seemed more likely (as the letter in question had come from a German law firm), UK proceedings were a possibility given that the letter referred to Logitech requesting Europe-wide relief

► Because Tech had initiated these proceedings, it is the Claimant. This is the case even though it is Tech who had been accused of design infringement. For that reason, the home courts of Logitech (as Defendant) have jurisdiction to hear the claim for a declaration of non-infringement of Logitech's Community unregistered design. Logitech has establishments in the Netherlands and Croatia, but not the UK

Now what?

Watch this space: the Government has recently carried out a public consultation on a proposed Intellectual Property (Unjustified Threats) Bill, which seeks to clarify and harmonise the law in this area.