LADDIE CLEARS THE AIR OVER THREATS APPLICATIONS

Butterworth’s All England Direct subscription-only service has just turned up Reckitt Benkiser (UK) Ltd v Home Pairfum Ltd and others, a “threats” case heard before Mr Justice Laddie on Friday. Reckitt, who make air fresheners and sell them in specially designed containers, sued Home Pairfum, its owner and managing director for design right and trade mark infringement. The defendants denied the allegations and brought a counterclaim, contending that the claimant had made groundless threats of infringement proceedings contrary to s 21 of the Trade Mark Act 1994 (“‘Where a person threatens another with proceedings for infringement of a registered trade mark other than (a) the application of the mark to goods or their packaging, (b) the importation of goods to which, or to the packaging of which, the mark has been applied, or (c) the supply of services under the mark, any person aggrieved may bring proceedings for relief under this section”). The defendants also applied to have Reckitt’s solicitors joined as defendants to that counterclaim. Reckitt applied for the counterclaim to be struck out on the ground that it gave rise to an abuse of process and was in breach of the court’s case management powers. It argued that the threats provisions forced an IP owner to sue without prior negotiation, since attempts to negotiate with alleged infringers were likely to be construed as threats. This result ran counter to the objective of the Civil Procedure Rules, which sought to promote pre-action settlement.

Laddie J dismissed both Reckitt’s and the defendants’ applications. He said that the court’s powers, which were wide, should be tailored to meet the circumstances of the case. The court could strike out an action where there was an abuse of process, but it was not always correct to do so. If an abuse of process might be addressed in a less draconian manner, the court would take that approach. In this case there was no substantial saving to be made by striking out the counterclaim and it would be convenient to allow all matters to be canvassed at trial.

The IPKat believes that traders should be protected against wrongful threats. However, he wishes that the “threats” provisions in UK intellectual property law were properly rationalised. As it is, threats proceedings can be made against a person who makes wrongful threats of patent, trade mark or design infringement, but not copyright, passing off or breach of confidence. Where the threats action is available, its drafting and its effects are unclear and vary as between different IP rights.

Unusual air fresheners here, here and here