Intellectual Property (Unjustified Threats) Act 2017
The Intellectual Property (Unjustified Threats) Act came into force on 1 October 2017. We first reported this bill in our article of 14 June 2017 (see earlier article here). Our earlier article provides an in-depth review of the new provisions.
In summary, the law change brings the trade marks threats provisions into line with the corresponding provisions for patents and designs, and provides some much-needed clarity over what has been a difficult and complex area of IP law.
The scope of the threats provisions has now been extended to acts done (or acts that would be done) in the United Kingdom (replacing threats of infringement proceedings before the UK courts). This is to allow for the provisions to apply to the forthcoming Unitary Patents. This also means that IP lawyers outside of the UK may need to take note of these new threats provisions. For example, a French lawyer, writing to a German company about its allegedly infringing activities taking place in the UK will need to consider if its threats are justified.
Other changes now expressly provide for ‘permitted communications’ between the parties so that the IP owner can identify its IP rights to the ‘infringer’. This can help in efforts towards mediation or assist in efforts to discover primary infringers and thus avoid writing to secondary infringers, without fear of making an unjustified threat.
The remedies for unjustified threats have not changed, and continue to include a declaration that the threat is unjustified, an injunction and/or damages. However, a new defence for the IP owner is that it can now claim that it could not identify the primary infringer and that it duly notified the unjustified threats claimant of the steps taken in this regard.
What clearly has not changed is that writing to a primary infringer (e.g. a person or company that is applying a third party’s registered trade mark to their goods or their packaging) rather than a secondary infringer (e.g. a retailer that is selling goods that the primary infringer has provided to them), identifying a valid registered right is unlikely to be considered an unjustified threat. Further, the threats provisions apply only to patents, SPCs, registered UK and EU trade marks and registered/unregistered UK and EU designs. It still does not apply to other IP areas such as passing-off and copyright.
However, the new provisions now provide some comfort for IP lawyers (and their clients) in that a practitioner cannot be accused of making an unjustified threat, provided the practitioner was acting in a legal capacity, reporting on an aspect of law on which it is licensed to practice (and is regulated by an appropriate body), had identified in correspondence that it was acting in that legal capacity on client’s instructions, and had identified its client.
We hope that this brief analysis of the recent changes has been helpful. If you would like more detailed information (this article does not, of course, provide legal advice) then please get in touch with your usual Forresters attorney – or just contact one of our offices.