IP Infringement ‘Threats’ - How to Avoid Getting it Wrong
English law prohibits making certain kinds of threats of intellectual property infringement. This applies to patents, registered designs and registered trademarks. 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. 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 Intellectual Property (Unjustified Threats) Act 2017 changed the previous threats regime with a view to simplifying it, ensuring consistency across the different IP rights and introducing a statutory definition of a threat. The Act also removed the risk of liability for the solicitor or patent/trade mark attorney sending the relevant communication, in most circumstances.
This introductory level 30 minute 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 of this
- What can and cannot be safely said
- Implications for ‘without prejudice’ communications
- Implications for online enforcement
- Statutory exceptions for example in relation to manufacturers, importers and services providers
- Territorial considerations
- Justification of threats made in respect of mere pending IP applications
- What is the position in respect of other IP such as copyright?
This webinar was recorded on 2nd September 2019