Unjustified threats of intellectual property right infringement
Produced in partnership with Ailsa Carter and John Coldham of Gowling WLG
Unjustified threats of intellectual property right infringement

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:

  • Unjustified threats of intellectual property right infringement
  • The introduction of the current threats regime
  • The definition of a threat
  • Exceptions
  • Who may bring proceedings for the tort of making a threat of infringement proceedings?
  • Who can be liable for making a threat of infringement proceedings?
  • Defences
  • Remedies available for breach of the threats provisions
  • Practical issues

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:

  1. a right (a patent, a registered trade mark or a registered or unregistered design, or a published application for such) exists, and

  2. 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)