Having received Royal Assent on 27th April 2017, the Intellectual Property (Unjustified Threats) Act 2017 has now come into force.
The government tasked the Law Commission in 2012 to review the law regarding unjustified threats between parties over patents, trade marks and designs. The review aimed to provide consistency in tackling threats regarding the use of different IP rights.
The Act seeks to achieve this by:
- clarifying what type of communications are permitted in a dispute over IP infringement between different parties;
- preventing the misuse of threats to intimidate or gain an unfair advantage in circumstances where no infringement of an IP right has actually occurred; and
- providing a clear framework within which businesses and their professional advisors can operate to resolve disputes, including opportunities to negotiate a settlement before resorting to litigation.
Under the Act, a ‘permitted communication’ in a dispute over an IP right is a communication where:
- no express threat is made;
- a communication is made for a ‘permitted purpose’, such as giving notice of an existing patent, the discovery of possible primary acts of infringement, or making the person aware of an IP right; and
- the party making the communication reasonably believes all information relating to such threat to be true and necessary.
The above examples of ‘permitted communication’ are defined according to the three criteria above within three different sections, dealing each with patents (amending s70B of the Patents Act 1977), trade marks (amending s21B of The Trade Marks Act 1994), designs (amending s26B of the Registered Designs Act 1949, and s253B of the Copyright, Designs and Patents Act 1988) and Community Designs (amending Regulation 2B of the Community Design Regulations 2005 (S.I. 2005/2339)).
Any unjustified threat in question needs to be one that brings court proceedings, whether inside or outside of the United Kingdom, for an act performed or intending to be performed in the UK. This is outlined accordingly in subsection 1 of the newly amended sections stated above.
Within this context, more certainty can be given to what can constitute a ‘permitted purpose’, while giving the court flexibility to take into account surrounding circumstances of particular cases, allowing the law to develop over time and reflect circumstantial changes.
Furthermore, the business guidance to the Act provides examples of ‘non-permitted purposes’. These are where the party making an unjustified threat prevents the other party from doing something, requests the other party to destroy or hand over an item, or forces the other party to promise not to do something in respect of the IP right in question.
Unjustified threats can also now be made in mass communications such as press releases, instead of being made by an identified individual.
Available remedies against unjustified threats will include injunctions that prevent further threats, damages for any losses that are consequential from the threat and a declaration that the threat was unjustified.