The Intellectual Property (Unjustified Threats) Act 2017, which came into force on 1 October 2017, represents a long-awaited and positive change for brand owners and their legal representatives.
Previously, IP rights owners could themselves be made subject to legal proceedings when seeking to enforce their rights due to a broad definition of what constituted an ‘unwarranted threat’. By providing a set of ‘permitted communications’ which are protected against threats actions and providing judges with the discretion to treat any action as being made for a ‘permitted purpose’, the Act provides IP owners with more wiggle room to rightfully defend their property
These permitted communications may be particularly welcome in the context of e-commerce. Brand owners are increasingly using the in-built takedown mechanisms on marketplace and social media platforms to stop vendors of counterfeit goods and general IP infringement. However, the volume of such infringements means that a standardised approach needs to be taken. As the case of Cassie Creations Ltd v Blackmore & Anor  EWHC 2941 illustrates, the UK’s former IP threats regime constituted a pitfall for brands looking to enforce in this forum. The new Act means that brands will be less likely to fall foul of the threats provisions.
In this respect, by acknowledging the importance of pre-action correspondence in disputes involving online commerce, the Act represents a step forward in bringing the law up to date with contemporary commercial practices.