If you discover that someone is using a name, design or invention which appears to be identical to one you believe to be exclusively yours, you will want to stop them immediately. However be careful how you go about doing so. It is vital to consider all the circumstances carefully before any action is taken which might constitute a ‘threat’.
The law on threats is intended to prevent a business suffering loss of legitimate trade by giving in to pressure from others claiming to have rights which they do not in fact have.
If your communication with a suspected infringer, written or oral, is understood to be a threat of infringement proceedings, a suspected infringer can bring an action against you. If the threat is not justified, the suspected infringer can seek:
- damages against you for the loss they have suffered as a result of the threat;
- an injunction preventing you from making further threats; and
- a declaration that the threat was not justified.
The threat does not have to be expressed: it can be implied, as the High Court decided in a 2009 (and rather fantastically named) case- Grimme Landmaschinenfabrik GmbH & Co KG v Scott (t/a Scotts PotatoMachinery) (2009). In that case, even though a letter expressly stated that the Intellectual Property owner would not bring legal proceedings, the court found that the context of the correspondence read as a whole amounted to a threat.
The court considers whether an ordinary person receiving the communication would reasonably regard it as a threat. Simply notifying the suspected infringer that an intellectual property right exists would not be classed as a threat but care should still be taken as it can be easy to cross what is a fine line.
You would, however, be justified in threatening an action for the alleged infringement of your intellectual property rights if the suspected infringer carries out certain activities as set out in the Patents Act, the Trade Marks Act, Registered Designs Act and the Copyright, Designs and Patents Act and is found to have infringed your intellectual property rights.
And you would be able to defend a threats action if you could show that the threat you made was justified because the suspected infringer has actually infringed your intellectual property rights. However this defence does not apply if it can be shown that your intellectual property rights are invalid.
What to do
If you believe that someone is infringing your intellectual property rights, ensure that any communication you have with the suspected infringer is drafted very carefully. Similarly, if you are the recipient of any communication which appears to be demanding that you stop or modify what you regard as your proper business, then you should take advice about whether a groundless threat has been made against you.
DDI – 0117 9453 042