New protection for businesses against groundless threats
14 November 2017
Under intellectual property law, individuals and businesses are protected from threats of legal action for infringing a third party’s intellectual property rights (IPRs) when those threats are groundless and unjustified.
A threat may be unjustified if, for example, the third party’s IPR is invalid, or if it does not actually own it.
It is not hard to imagine that this type of abusive behaviour could be used in the marketplace in order to gain a commercial advantage, and the law recognises that parties should not be subjected to it. The unjustified threats provisions apply to registered trademark, patent or design right infringements. A business that receives an unjustified threat can sue the third party for an injunction preventing further threats, a declaration that there is no infringement and/or for damages to compensate them for any loss.
For a long time the law in this area has been inconsistent and in some respects unsatisfactory. Earlier this year the Intellectual Property (Unjustified Threats) Act 2017 (the Act) was passed, with certain provisions already in force, and further provisions to come into force later on.
The Act has made various changes in an area which was often misunderstood. It adds greater consistency across IPRs, providing a new statutory test as to what constitutes a threat, and making it clear when professional advisors will not be liable for such threats. The Act also clarifies for solicitors on what basis they can write to alleged infringing parties without fear of an unjustified threats claim being made against them.
It should be noted, however, that there are no statutory unjustified threats provisions in respect of copyright, passing-off or breach of confidence.
Get in touch with us for clear, expert guidance on this topic.
Paul Gordon is a partner in our litigation and dispute resolution department. He joined Willans from a City law firm in 2005, and has experience in handling a broad range of commercial matters, including intellectual property, director and shareholder disputes, and engineering and construction cases.
Disclaimer: All legal information is correct at the time of publication but please be aware that laws may change over time. This article contains general legal information but should not be relied upon as legal advice. Please seek professional legal advice about your specific situation - contact us; we’d be delighted to help.
When purchasing a property, the seller must complete a sellers property information form (SPIF). These include simple questions asking whether there has ever been – or if there are currently…
It is a common term in a lease that a certified service charge sum demanded by the landlord is ‘conclusive’. But what should you do if the service charge is…
The Fire Safety (England) Regulations 2022 came into effect on 23 January this year. These regulations will materially impact landlords, managers and operators of buildings in England that contain two…
Our website uses cookies to improve your experience while you navigate through our website. Out of these cookies, the cookies that are categorised as necessary are stored on your browser as they are essential for the working of basic functionalities of the website. We also use third-party cookies that help us analyse and understand how you use our website. These cookies will be stored in your browser only with your consent. You also have the option to opt-out of these cookies but it may affect your browsing experience on our website. You can find our cookie policy here.
Necessary cookies are absolutely essential for our website to function and enable core functionality such as security and accessibility. These cookies do not store any personal information. You can block these cookies by changing your browser settings, but this may affect how the website functions.
Functional cookies help to perform certain functionalities like sharing the content of the website on social media platforms, collect feedbacks, and other third-party features.
Cookie
Duration
Description
__cf_bm
30 minutes
This cookie, set by Cloudflare, is used to support Cloudflare Bot Management.
mgref
1 year
This cookie is set by Eventbrite to deliver content tailored to the end user's interests and improve content creation. It is also used for event-booking purposes.
Performance cookies are used to understand and analyze the key performance indexes of the website which helps in delivering a better user experience for the visitors.
Analytical cookies are used to understand how visitors interact with the website. These cookies help provide information on metrics the number of visitors, bounce rate, traffic source, etc.
Cookie
Duration
Description
_ga
2 years
The _ga cookie, installed by Google Analytics, calculates visitor, session and campaign data and also keeps track of site usage for the site's analytics report. The cookie stores information anonymously and assigns a randomly generated number to recognize unique visitors.
_gat
1 minute
This cookie is installed by Google Universal Analytics to restrain request rate and thus limit the collection of data on high traffic sites.
_gid
1 day
Installed by Google Analytics, _gid cookie stores information on how visitors use a website, while also creating an analytics report of the website's performance. Some of the data that are collected include the number of visitors, their source, and the pages they visit anonymously.
G
1 year
Cookie used to facilitate the translation into the preferred language of the visitor.
vuid
2 years
Vimeo installs this cookie to collect tracking information by setting a unique ID to embed videos to the website.
Advertisement cookies are used to provide visitors with relevant ads and marketing campaigns. These cookies track visitors across websites and collect information to provide customized ads.