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

The following IP practice 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
  • The threat consists of (ie is confined to) ‘primary acts’ of infringement
  • The threat is made to a ‘primary actor’ only
  • The communication containing the threat qualifies as ‘permitted’
  • 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?
  • The safeguard for professional advisers
  • More...

Unjustified threats of intellectual property right infringement

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.

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). In the discussion of the regime below, references to EU-derived legislation are references to that legislation in the form in which it has been retained and amended in the law in the UK after 31 December 2020. For more information about retained EU law, see Practice Note: Introduction to retained EU law.

On 1 January 2021, new comparable trade marks, re-registered designs and continuing unregistered designs were created in the UK and a new supplementary unregistered design was introduced. For continuing unregistered designs and supplementary unregistered designs, particular care is required to ensure the appropriate amendments to the Community Design Regulations 2005, SI 2005/2339 are considered, but the effect of these provisions, for the law regarding threats, is the same. For more information about these new rights, see Practice Notes: Design rights before and after Brexit—comparison table and Trade mark

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