The Law Commission (the Commission) has published a report on reform of the threats provisions relating to trade marks, patents and designs (the report).
In the report, the Commission has recommended bringing the threats provisions relating to designs and trade marks into line with those covering patents. This means that it would not be actionable to threaten a primary actor, even if the threat relates to allegations of secondary infringement as well as primary infringement.
The Commission has proposed that the concept of primary infringement should be expanded to include those who merely intend to commit primary acts, provided that the rights holder has evidence of this intention.
The Commission has also recommended that it should be permissible, without attracting liability for groundless threats (as currently is the case with patents), to make enquiries of suspected secondary infringers for the sole purpose of finding out if there has been infringement, provided that there is a legitimate commercial purpose behind the communication, and there are reasonable grounds for believing that the information provided is true.
Under the suggested regime, it would no longer be possible to avoid liability for making threats by showing that, at the time the threat was made, the threatener did not know, or had no reason to suspect, that the patent was invalid.
In addition, the Commission has recommended that lawyers, and patent and trade mark attorneys, should no longer be jointly liable for making threats where they have acted in their professional capacity and on instructions from their clients.
(For more information, see "Briefing Groundless threats of IP proceedings: a potential solution?", this issue.)
Reform of the law on threats is long overdue. As the provisions currently stand, they are easy to avoid, complex and inconsistent, and they can also obstruct attempts to settle disputes.
Currently, the UK is the only country in the EU (with the exception of Malta) with specific groundless threats legislation. However, the other EU member states each have their own, unharmonised, ways of dealing with the problem, such as unfair competition. More drastic changes might eventually become necessary as a result of the increasingly cross-border nature of intellectual property litigation, including when the EU unitary patent becomes available. The Commission said that it might then be necessary to consider the introduction of a new tort of unfair competition, along the lines of the Paris Convention, either as a UK measure or as part of wider EU reforms.
Source: The report, 14 April 2014, http://lawcommission.justice.gov.uk/docs/lc346_patents_groundless_threats.pdf.
First published in the April 2014 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.