In essence, any person aggrieved by a threat to issue proceedings in the United Kingdom for infringement of certain IP rights - whether it is the direct recipient of the threat or an affected party, such as a supplier - may take action against the person making the threat. At present, threats provisions apply to patents, registered trademarks and registered and unregistered designs. The remedies include:
- a declaration that the threats were unjustified;
- an injunction to prevent further threats from being made; and
- legal costs.
A number of cases in recent years, in which non-UK lawyers have exposed their clients and their firms to actions for unjustified threats, have heightened awareness outside the United Kingdom. However, changes are being considered. The Law Commission has recently launched a project to consider whether to repeal, reform or extend the threats provisions.
The project will consider the balance between the interests of IP owners, which want to be able to assert their rights, and traders, which value 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, causing damage to the recipient's business, even if the IP right in question 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 issued in late March 2014. Even if the threats provisions are to be reformed, the changes are a long way off. However, any party that may find itself involved in a threat to issue proceedings should be aware of certain key points:
- 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 a party on notice of your rights; however, even if a communication does not explicitly threaten infringement proceedings in the United Kingdom, 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 UK lawyers before looking to assert IP rights in relation to the United Kingdom, as great care will need to be taken when deciding on the content and recipient of any communication.
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