The United Kingdom is one of the few jurisdictions to have provisions within the trade mark law relating to the making of unjustified threats. The aim of these provisions is to encourage trade mark proprietors to write to, and engage with, the primary infringer (generally the party attaching the infringing mark to the goods or offering services under the mark) as opposed to the secondary infringer – often characterised as the innocent small shop keeper.
Although a noble aim, the provisions have often come in for criticism as they arguably have the effect of preventing effective communication when dealing with infringement matters and could also see a wedge driven between advisor and client (the advisor potentially being liable for making a threat as well as the client).
From 1 October 2017 new threats provisions will come into force in the UK which, it is hoped, will make writing to infringers a much more straightforward process.
The new provision introduces a two stage test for determining if a threat has been made in a communication, as follows:
Only if this initial test is satisfied, and it seems to be a low hurdle, would questions as to whether the threat made was “actionable” under the unjustified threat provisions arise.
In terms of whether a threat is actionable the old safe harbours are largely replicated. However it is now also acceptable to allege that the primary infringer has caused another person to apply a sign to goods or their packaging. It is also now made clear that it is possible to allege infringement in respect of “an act which, if done, would constitute an infringement of a kind mentioned [in the safe harbours]”.
An important development is that it will also be permissible to address secondary infringement, relating to the primary infringement, in the same letter. For example, from 1 October it will no longer be an actionable threat to, not only assert rights against the primary infringer for importing an infringing product, but also for offering it for sale. The secondary infringement cannot however relate to a different instance of infringement; this would still fall foul of the rules.
Perhaps the biggest change relates to a new section covering “permitted communications”. This gives rights holders, subject to certain controls, the ability to write to secondary infringers. This must be for a “permitted purpose” which can include giving notice of a registered trade mark and attempting to discover who the primary infringer is. The permitted purpose is likely to be especially useful where the identity of the primary infringer is hidden.
This does, however, require that “reasonable steps” have been made to identifying the primary infringer and these steps must be set out in writing to the secondary infringer. It is not yet clear what entails a “reasonable step”, but no doubt case law will in the future help define this, and care must therefore be taken when relying on these exceptions.
Writing to a secondary infringer remains fraught with difficulty until further clarification is provided on the meaning of “reasonable steps”. However this is an important change which provides a useful option should the primary infringer be hidden from view. Until there is further clarity we suggest that brand owners make the usual reasonable checks and conduct trap orders before making an approach to a secondary infringer.
The final significant change is that professional advisors can no longer be subject to an unjustified threats action themselves if they are acting in a professional capacity, are regulated and are making the threat on the instructions of the client and clearly identify the client in the letter. This is good news as it removes the risk of a wedge being driven between advisor and client through the threat of two separate threats actions.
These new measures are a welcome amendment to the current threats provisions. Writing to a primary infringer with a threat of trade mark infringement remains a step not to be taken lightly and one to carefully discuss prior to sending any letter. It remains important to stay within the safe harbours, which remain largely unchanged. We hope that the new provision will have the desired effect and make it easier to deal with infringers.