Anyone looking to assert their intellectual property rights in the UK should be aware of the threats provisions, or they (and their advisers) may face claims in the UK.
In essence, any person aggrieved by a threat to issue proceedings in the UK for infringement of certain IP rights, whether the direct recipient of the threat or an affected party (such as a supplier), may take action against the person making the threat. Currently, threats provisions apply to patents, registered trade marks, and registered and unregistered designs, and the remedies include: damages; a declaration that the threats were unjustified; an injunction to prevent further threats being made; and legal costs.
There have been a number of cases in recent years where non-UK lawyers have exposed their clients, and their firms, to actions for unjustified threats, which has heightened awareness outside the UK.
But changes are being considered. The Law Commission has recently launched a project to consider whether to repeal, reform or extend these provisions.
The project will consider the balance between the rights of IP owners, who want to be able to assert their rights, and traders, who value the protection from overly threatening legal letters. For certain small businesses, the fear of litigation can lead to a decision to concede as a result of a threatening letter, resulting in damage to their business, even if the IP right is not infringed or is invalid.
The Law Commission intends to publish a consultation paper in February 2013, which will lead into a three month consultation period running until May 2013. The culmination of the consultation will be a Law Commission final report on recommendations to the Government, which will be made in late March 2014. So, if the threats provisions are to be reformed, any changes are a long way off.
- Threats provisions apply to patents, registered trade marks, and registered and unregistered designs.
- There are limited statutory exemptions to the threats provisions, but a communication must be carefully composed to take advantage of them.
- It is generally acceptable to put someone on notice of your rights; however, even if a communication does not explicitly threaten infringement proceedings in the UK, a court may find that a threat is implied when considered in context. The courts construe the notification provisions very narrowly.
- A threat can be made orally or in writing.
- Advice should always be sought from English lawyers before looking to assert your IP rights in relation to the UK, as great care will need to be taken when deciding on the content and recipient of any communication.