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Prospective reform of threats legislation

Under UK law, persons aggrieved by groundless threats of action for infringement of certain intellectual property rights can take action to restrain those threats. Typically, such a situation arises where a rights holder threatens a competitor’s customer. If those threats are unjustified, the competitor may sue the rights holder.

The manner in which these provisions are used can sometimes be seen as abusive, for instance where they are used tactically to drive a wedge between the lawyers who make the threat and their client.

On 15 April 2014, following consultations, the Law Commission published its report on potential amendments to the groundless threats provisions for patents, trade marks, and design rights.

The key recommendations are as follows:

• To bring trade mark and design rights threats provisions in line with the amendments made for patents in 2004 by stating that a threats action cannot be brought where threats to sue are made to those who have carried out the excluded acts, even where any other act is referred to. In addition, it is recommended that this extends to threats in respect of intended acts.

• To set up a “safe harbour” such that rights holders and those who act for them can communicate with secondary actors, who would ordinarily be able to reply on the threats provisions, by allowing communication where there is a legitimate commercial purpose behind it, eg to track down the source of infringement or to remove a defence of innocence. The rights holder would be required to have reasonable grounds for believing that the information communicated is true.

• To make lawyers, registered patent attorneys and trade mark attorneys not liable for threats when acting in their professional capacity and on clients’ instructions.

The full version of the report may be found here - Patents Trademarks and Design Rights: Groundless Threats

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