AIPPI Event Report: Unjustified threats - are you threatening me?

One of the final events of the IP calendar this year was AIPPI's panel session on unjustified threats and the new changes brought by the Intellectual Property Unjustified Threats Act 2017.  George Khouri (Bird & Bird) reports on sold out event for the IPKat's readers:

"Michael Hicks, of Hogarth Chambers, gave an AIPPI talk at Bird & Bird’s offices on the changes brought in by the Intellectual Property Unjustified Threats Act 2017 (the “Act”).

Threats under the Act

Michael discussed the changes made by the Act, which have been discussed by IPKat here and here.

The below table was particularly helpful in showing how threats provisions under the Act are structured for the various IP rights to which they apply:

	Patents	UK TM	EU TM	UK regd. designs	UK design right	Community designs[1]
Legislation amended	PA 1977	TMA 1994	CTM Regs[2]	RDA 1949	CDPA 1988	CD Regs[3]
Definition of threat	s. 70	s. 21	see TMA	s. 26	s. 253	Reg. 2
Actionable threats	s. 70A	s. 21A	“	s. 26A	s. 253A	Reg. 2A
Permitted communications	s. 70B	s. 21B	“	s. 26B	s. 253B	Reg. 2B
Remedies and defences	s. 70C	s. 21C	“	s. 26C	s. 254C	Reg. 2C
Professional advisors	s. 70D	s. 21D	“	s. 26D	s. 255D	Reg. 2D
Pending rights	s. 70E	s. 21E	“	s. 26E	-	Reg. 2E[4]
Delivery up etc.	s. 70F[5]	s. 21F	“	s.26F	S253E	Reg. 2F

A number of interesting points were raised at the talk and the subsequent Q&A:

Common law

Before running through the changes made by the Act, we were reminded of the common law torts and other remedies that apply whether the communication in question is actionable under the Act or not. These include:

-         malicious falsehood;

-         defamation;

-         abuse of process;

-         contempt of court;

-         inducing breach of contract/causing loss by unlawful means.

The above torts can sometimes be difficult to establish evidentially, but they are not subject to the exemptions and protections provided by the Act. In addition, they apply to threats of actions not covered by the Act, such as passing off.

Jurisdiction

A threat was previously understood to mean a threat to bring proceedings in a UK court. This was stated in Best Buy v Worldwide Sales Corporation [2000]FSR 686, in which Floyd J expressed concern about “exporting” the threats provisions overseas.

This has now been extended to cover threats to bring proceedings for an act done (or intended to be done) in the UK – whether the proceedings are in a UK court or not. This creates a clearer link to the UK for EU-wide rights, so that threats provisions apply to, for example, patents that have effect in the UK and fall within the jurisdiction of the UPC (in the future). Now to see when the UPC will be implemented!

Online complaint procedures

The Act doesn’t address the outstanding problem of whether taking advantage of online complaints procedures, such as the ones on Amazon or eBay (“Vero notices”), can amount to a threat.

Pumfrey J has previously said (in Quads 4 Kids v Campbell [2006] EWHC 2482 (Ch)) that a Vero notice is "a clear arguable threat" and granted an interim injunction on this basis.

More recently, (in Cassie Creations v Blackmore and Mirrorkool [2014] EWHC2941 (Ch) and T&A Textiles and Hosiery Limited v Hala Textile UK Limited [2015] EWHC 2888) it was suggested that arguing that an eBay Vero notice may be a threat is persuasive. However, this issue has not been laid to rest yet.

Safe harbour

If the rights-holder can't find the primary actor, communication with secondary infringers may now be permitted for certain purposes. These include notifying them that a right exists and providing details of it, and (importantly) asking for information about primary infringers.

Interestingly, the Act leaves it to the court's discretion to identify new "permitted purposes" as required. The Law Commission suggests that such enlargement will be incremental and will continue to reflect that communication to secondary infringers should be exceptional.

Professional advisors

Professional advisors are no longer liable for threats actions under the new Act. This is intended to prevent misuse of the threats provisions, as they can no longer be used tactically to drive a wedge between a lawyer and their client.

The professional advisor must have been be acting on client instruction, identify the client, and be regulated by a professional body.

Some have expressed concerns that the requirement to prove that the advisor acted on client instructions would involve waiving litigation privilege, but the Law Commission opines that the advisor only needs to show that they were instructed to make the communication (i.e. send) and not that they were instructed to make a threat."

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[1] Registered and unregistered – regulation 1(2)

[2] Community Trade Mark Regulations 2006 - S.I. 2006/1027

[3] Community Design Regulations 2005 - S.I. 2005/2339

[4] Registered Community designs

[5] Including order for delivery up made by Unified Patents Court under the UPC Agreement articles 32(1)(c) and 63(2).