The following IP guidance note Produced in partnership with Ailsa Carter and John Coldham of Gowling WLG provides comprehensive and up to date legal information covering:
This Practice Note summarises the application and purpose of the law of unjustified threats in the UK. Anyone writing or sending a letter or other communication alleging, or even implying, infringement of an IP right in the UK should be aware of the risk of a claim (or counterclaim) being brought against them for threats.
Under the Practice Direction Pre-Action Conduct and Protocols, a potential claimant is required to set out its case sufficiently to allow the potential defendant to assess the claims made against it. Without sufficient care, sending pre-action correspondence to satisfy these pre-action requirements may mean that actionable threats are made. As a consequence, the pre-action requirements are sometimes deliberately not met in IP cases.
Since 1 October 2017, the UK’s threats regime has been governed by the legislative changes introduced by the Intellectual Property (Unjustified Threats) Act 2017 (IP(UT)A 2017).
Under the IP(UT)A 2017 regime, a communication contains a ‘threat of infringement proceedings’ if a reasonable person in the position of a recipient would understand from the communication that:
a right (a patent, a registered trade mark or a registered or unregistered design, or a published application for such) exists, and
a person intends to bring proceedings (in a UK court or elsewhere) against another person for infringement of the right by an act done (or proposed to be done)
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