Claims of intellectual property infringement are on the increase, a fact which seems somewhat inevitable given the growth in the online business sector. Every business will create some form of intellectual property throughout its existence, whether it is aware of this fact is another matter entirely. The ignorance of others intellectual property rights and the misunderstanding that the term carries leads to confusion and incorrect claims of intellectual property infringement being issued. However, caution should be emphasised for anyone alleging intellectual property infringement, as a claimant can soon find themselves becoming a defendant to an intellectual property claim under the law of unjustified threats.
Unjustified threats are an action which can be brought by prospective defendants to intellectual property claims, however they are not applicable to claims of copyright infringement nor are they valid for the tort of passing off. It is of paramount importance that individuals, businesses and their legal advisors are certain that there has been a clear infringement of the intellectual property right prior to threatening proceedings. If not, then they can quickly find themselves the recipient of a threatening letter stating that they have made an unjustified threat.
At present the law on unjustified threats differs between the different types of intellectual property. This means that the grounds upon which an unjustified threat can be claimed differs for patents, trademarks and design rights. The new Bill which is due to receive royal assent unifies the three intellectual property rights and provides the same test for each under their own parenting legislation. Under the Bill the test for whether a threat amounts to an unjustified threat is whether the communication would be understood by a reasonable person in the position of a recipient to mean that a right exists and that there has been a threat of formal proceedings.
The Bill is also set to bring about changes to the liability of legal advisors in the profession. At present, intellectual property lawyers can be held liable for unjustified threats when acting on behalf of a client. Under the Bill there will now be an exemption when legal advisors are acting on direct instructions from a client and name their client in the correspondence.
The Bill will amend several pieces of existing legislation including the Patents Act 1977, the Trademark Act 1994 and the Registered Designs Act 1949. This new Bill will undoubtedly be a welcome change for both intellectual property law advisors and their clients.
Summerfield Browne Solicitors are specialists in commercial and intellectual property law. We have offices in London, Birmingham, Cambridge, Oxford, Northampton and Market Harborough, Leicester
