The overarching aim of the Law Commission's draft Bill is to harmonise the laws allowing aggrieved persons to bring an action for unjustified threats (of proceedings for infringement of intellectual property rights) across those rights to which they currently apply:
- Patents (and now making provision for European patents under the Unified Patent Court's jurisdiction and the new unitary patents);
- UK and Community trade marks; and
- UK and Community, registered and unregistered design rights.
The proposal is to conform the provisions for trade marks and design rights with those already in place for patents - by extending provisions on who may be threatened, without risk of a threats action, to those who are already primary infringers, in relation to any act, not just acts of primary infringement (to which they are currently limited for these former two types of IP right).
What comprises an actionable unjustified threat would thus be narrowed in scope by this Bill. For the holders of IP rights, this change and the provision of a "safe harbour" form of communication for "permitted purposes" should make it easier to communicate and assert rights pre-action, and to request information on the source of infringing goods from those in a supply chain or retailers, without risking the potential defendant getting the upper hand and becoming a claimant in a threats action against the rights holder. The Bill will also help bring IP rights disputes in line with the general pre-action protocol requirements for correspondence between parties prior to the issuing of proceedings, currently difficult to follow in the IP arena without risking a threats action.
To some extent the Law Commission has missed an opportunity to abolish what is a complex area of law which appears at odds with the approach taken in other parts of the EU; instead it has extended and codified it, albeit primarily in respect of registered rights without extending it to unregistered IP rights (other than unregistered designs which were already caught by the current legislation).
Following a "short consultation", the Bill looks likely to be fast-tracked through the legislative process via the special Parliamentary procedure approved by the House of Lords in 2010 for uncontroversial Law Commission bills attracting broad Parliamentary consensus.