IP Infringement ‘Threats’ - Understanding the Risks & Remedies

Introduction

English law prohibits making certain kinds of threats of intellectual property infringement.

This applies to patents, designs and registered trade marks and the aim of these prohibitions is to prevent intimidation of innocent intermediaries such as distributors and retailers.

If prohibited threats are made, anyone affected can bring a claim for an injunction and damages and the rights-holder must then justify the threat by succeeding in infringement claims.

Not only is this unwelcome in itself, but it can shift the dynamic in an infringement dispute so as to give the infringer strategic advantages.

The legislation is complex and may be misunderstood and this webinar will assist practitioners to navigate this tricky area.

What You Will Learn

This webinar will cover the following:

• What kinds of communications may be an actionable ‘threat’ and the implications
• What can and cannot be safely said?
• Statutory exceptions (e.g., in relation to manufacturers, importers and services providers)
• Damages - Dr Reddy's Laboratories (UK) Ltd v Warner-Lambert Co LLC
• Implications for ‘without prejudice’ communications
• Implications for online enforcement - case law on liability test for unjustified takedown notices (Shenzhen Carku v The Noco Company)
• Justification of threats made in respect of pending IP applications
• What is the position in respect of other IP such as copyright?
• Unlawful interference - wrongful YouTube copyright takedown (Costa v Dissociadid)
• Causing loss by unlawful means - Secretary of State for Health v Servier Laboratories Ltd in the Supreme Court
• Territorial considerations

This webinar was recorded on 6th June 2023