The UK Law Commission, a body established to keep statutes under review and to recommend reforms, submitted, mid-April, a report suggesting the review of the provisions on groundless threats of infringement proceedings. This report was commissioned by the Department for Business, Innovation and Skills and the UK Intellectual Property Office.
A threat is groundless when there is no actual trademark or patent infringement or when there is no genuine intention to litigate, e.g when right-owners are aware that their rights are weak or no longer protected. The threats aim at frightening alleged infringers or distributors so that they discontinue their activities.
This remedy was created in an attempt to reduce groundless threats. It is currently subject to reform proposals which are under discussion. The proposed amendments aim at increasing the efficiency of the judiciary and limit the abuse thereof.
What are the amendments recommended by the Commission?
- The protection against groundless threats should be maintained for patents, trademarks and industrial designs, but it should be reformed.
- The conditions governing communication between right-owners and alleged secondary infringers should be reformed. This provision aims at fostering negotiation prior to litigation.
- Legal counsels should no longer be liable in respect of threats made in their professional capacity on behalf of a client. This provision effectively implements a limited liability regime for agents to the extent that they act on behalf of their clients.
Through these recommendations, the Commission insists on the importance of negotiation and communication to limit litigation. This is the reason why it wants to see the rules change soon.