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Update on the Unjustified Threats Act

The new Intellectual Property (Unjustified Threats) Act has now taken effect (as of 1 October 2017). As discussed in our previous post, the act is designed to create an environment that favours negotiation and settlement, rather than litigation, between parties involved in an IP infringement dispute.

This change follows a review of the law of unjustified threats carried out by the Law Commission* with a goal of creating a system whereby parties can negotiate fairly over IP disputes, whilst protecting parties likely to be harmed by unjustified threats over alleged infringement. This includes any party whose commercial interest might be affected by the threat and need not necessarily be the direct recipient of the threat. In particular it is designed to discourage threats made to parties supplying or retailing anything protected by an IP right when the correct party to contact would be the producer or importer.

It is always important to take care when making allegations of infringement because any unjustified threats may be actionable. Where threats are unjustified the party who made the threat may find themselves being sued for damages.

A two-part test for determining whether or not a communication constitutes a threat has been provided:
1. Whether a reasonable person would understand that a communication contains a declaration that a right exists and that a party intends to undertake infringement proceedings in respect of this right
2. Whether a reasonable person would understand that the threat relates to an act done (or an act that would be done) in the UK

However, those concerned that their rights may be infringed can still communicate with potential infringers. This allows disputing parties to exchange information and gives them an opportunity to privately settle any disputes without having to resort to court proceedings. Any communication of this type must be believed to be true by the person making the communication and must be made for a permitted purpose, including:
• Providing information that an IP right exists
• Ascertaining whether a right has been infringed and/or who has infringed it
• Providing information that a person has a right, where another person’s knowledge of that right is relevant to any proceedings brought in respect of that right.

The courts may, in some circumstances, treat another purpose as permitted if it is considered to be in the interests of justice to do so. However, if a party requests that someone stop doing something, promise not to do something, to destroy something or to hand something over, in respect of an IP right, this will not be considered a “permitted communication.”

The ability to provide information that an IP right exists is particularly important as if an infringer can reasonably claim to be unaware of the IP right the right-holder will not be awarded damages (although they can get an injunction against further infringement). However, once an infringer is made aware of such a right damages start to accrue unless they immediate cease to infringe.

According to the new Act, unjustified threats related to alleged infringement of patents, trade marks and design rights are all treated in essentially the same way. The new Act makes it clear that made publically and in mass communications, such as press releases, could constitute threats and such communications do not need to be made directly to an individual to be considered an unjustified threat, provided that they are more than a general warning.

As always, legal advice should be sought before any communication is sent regarding infringement of an intellectual property right. If you have any queries, please contact a member of our team who will be delighted to help.

*Although this was not a joint project, the threats provisions do apply in Scotland and the Law Commission consulted with the Scottish Law Commission during their review (URL: https://www.lawcom.gov.uk/project/patents-trade-marks-and-designs-unjustified-threats/).

This entry was posted in Uncategorized.

Changes to EU trade mark regulations

On 23 March 2016, an EU regulation entered into force changing various aspects of EU trade mark law and practice. However, a number of provisions were deferred and enter into force on 1 October 2017. The most important of these are as follows:

1. Changes to what might be registered as an EU trade mark
Until now it has been a limitation of EU (and UK) trade mark legislation that a trade mark must be a sign capable of being represented graphically. This has allowed the registration of three-dimensional marks, colours and colour combinations, and even sound marks. However, it has prevented the registration of some more esoteric signs which brand owners may believe should be protectable by trade mark registration, such as smell and taste marks, or even movement marks or holograms. From 1 October 2017 the requirements will be relaxed. Signs may now be represented in any appropriate form using generally available technology. We expect there to be a period of time in which the boundaries of the new rules are tested. EUIPO has listed some new formats in which trade mark applications may be filed (https://euipo.europa.eu/ohimportal/en/elimination-of-graphical-representation-requirement), including for example MP4 format.

2. Introduction of Certification marks
Certification marks are a kind of trade mark registration for marks used on goods and services to show that they are of an authorised material, mode of manufacture or performance, quality, accuracy etc. A well-known example is the British Woolmark device; another is the Harris Tweed orb logo which has been registered in the UK since 1909. It has been possible to register Certification marks in the UK, and many other territories, for a long time but until now it has not been possible to obtain an EU trade mark registration.
An important feature of certification marks is that the body which carries out certification and owns the certification trade mark registration must not actually carry out business involving the supply of the goods and services of the kind certified.

3. Procedural Changes

Quite a number of amendments to implementing regulations come into force on 1 October 2017. These are generally only important for practitioners. Examples include that priority claims must be made on filing; applicants may invoke acquired distinctiveness as a subsidiary claim (in case the mark is not found inherently distinctive) either at the start of the application procedure or at a later stage; evidence of the use of signs in the course or trade or the contents of relevant national law may be given by submitting internet links; and some kinds of evidence may be filed in any official language of the EU.

Another procedural change of potential significance is that assignment of a trade mark filed by an agent or representative (e.g. distributor) without the proprietor’s authorisation will now be available as a remedy. To date it has only been possible for the proprietor to request invalidation.

These changes represent a further useful development to and modernisation of the EU trade mark scheme.

For further information, please contact a member of our team directly or call +44 (0)131 243 0660.

This entry was posted in Trade Marks.