How are your Threats? Report from Law Commission on the Consultation

The IPKat has been following the Law Commission project on groundless threats.  This consultation was reported here while the project was covered in more detail last year here and here.

The IPKat was therefore delighted to receive this update from the very Law Commission itself, and would like to thank his correspondents on the matter.

Patents, trade marks and design rights: groundless threats – a consultation paper (Law Com 212)

The Law Commission consulted on this subject between 17 April and 17 July 2013.

Threatening Kat?

After a nail-biting finish we received 21 responses. The majority were group responses from the main representative European and national bodies for legal advisers and rights holders and clearly represent a huge amount of work, which will need careful analysis. We have also heard from individuals, judges, and public and private companies.

What is said here is not the Commission’s final view on policy. We will finalise policy over the autumn and take that to Commissioners for their comment and approval after Christmas. Any change to the law would also affect Scotland so we are consulting with the Scottish Law Commission as the project progresses.

The biggest change we proposed was to do away with the threats provisions altogether and introduce a new tort loosely based on Art 10bis of the Paris Convention. The proposal got a fair hearing and there were some very thoughtful and thought-provoking responses. We don’t believe that there is sufficient support to take this proposal forward, at least not for now. Some consultees saw the wider, long-term benefit of this type of reform, particularly in the light of how things are developing with the unitary patent. However, most of those who supported the proposal preferred to move incrementally towards this kind of reform as it represents such a major change. We will be asking the IPO whether this is something we should return to.

There was very wide support for reforming the law for trade marks and design rights along the lines of what was done for patents in 2004. A couple of consultees called for the complete or partial abolition of the threats provisions but, failing that, they supported this approach. Many stressed the need for consistency and clarity as to what a rights holder, or someone acting on their behalf, could safely do when contacting an alleged infringer. The risk of the law becoming overly prescriptive in pursuit of that goal was flagged up to us as was the need to ensure that SMEs could operate the law both as rights holders and persons affected by threats.

There were some strong views expressed on whether legal advisers should not be liable for making threats if acting on instructions. The overwhelming majority thought they should not be but some considered that this shouldn’t be without limit in case it was abused. The issue of whether unregistered design right should retain the current protection against threats got a mixed response, with persuasive arguments made for and against. Some argued that as an unregistered right it should be excluded while others pointed out that this would be impractical given the close interplay between registered and unregistered design.

We realise that our consultation was one among many and that there were plenty of other important issues competing for people’s attention - not least the IP Bill - and we would like to take this opportunity of thanking everyone who responded;  we  greatly appreciate it.

Our final report will be published in spring 2014 and, although we will not be producing a draft Bill to implement our recommendations, that option remains open for Government.  

In the meantime, the Commission is seeking suggestions for our new programme of law reform projects and we would be very interested to hear from friends of the IPKat. For more on the sort of projects we’re looking for and how to send us your suggestions, please visit our website: www.lawcom.gov.uk

Julia Jarzabkowski is a lawyer on the Commercial and Common Law team at the Law Commission. You can reach her on julia.jarzabkowski@lawcommission.gsi.gov.uk

This Kat actually does not have strong feelings on this topic, although he suspects that some of his fellow Kats do.  Readers are of course invited to comment here if they wish, although now the consultation is closed debate is rather less productive than it previously would have been.  On the other hand, this Kat's whiskers twitched at the invitation in the penultimate paragraph above - what IP-related law reform projects would our readers like to see?  Or have we had enough reform already for a while?