Like every “wash-up period” preceeding the dissolution of the British Parliament and the election of a new one, this latest period witnessed the rushed adoption of a new intellectual property Act, which received Royal Assent on April 27, 2017.
As its name implies, the Act is specific to threats issued by intellectual property rights owners. It devotes a chapter for each right, namely patents, trademarks, and designs. It therefore harmonizes the status of the threats communicated by rghts holders, leaving copyright aside.
First, the Act defines a threat of legal action for infringement. Accordingly, communications contain such a threat if a reasonable person in the position of a recipient understands that an intellectual property right (patent, trademark or design) exists, and that the holder of these rights intends to bring legal action.
The Act focuses on the possibility for intellectual property rights holders to address their threat of legal action for infringement to the primary actors (i.e. manufacturers or importers) directly, without risk of liability for unjustified threats. The rights’ owners will also be able to require these actors to cease secondary acts such as product sale.
Furthermore, the Act describes the actor’s defence once he has been threatened, namely declaring that the threat is unjustified, seeking an injunction to cease the threat, or requesting damages for the harm suffered. This defense does not hold if the owner demonstrates his right along with the measures taken and communicated to the perpetratof of the infringement.
Finally, the Act introduces a new provision preventing the owner from addressing threats to professional advisers who act upon instructions and who identify their clients in the communication.
This new “Intellectual Property (Unjustified Threats) Act” is perceived as a positive step towards harmonizing the British legal system with regards to intellectual property. The owner must nevertheless remain vigilant before bringing a threat against a potential infringer so as not to suffer the consequences of qualification of an unjustified threat.
Dreyfus & associés is specialized in the field of intellectual property. The Dreyfus team closely follows new legal developments in Europe. We can help and advise you regarding all intellectual property rights within Europe.