What to expect from the new UK unjustified threats regime

On 27 April 2017, the long-awaited Intellectual Property (Unjustified Threats) Act 2017 received Royal Assent. The Act follows the Law Commission’s recommendations to reform the regime relating to groundless threats of IP infringement proceedings, and has been heralded as long-overdue, particularly in relation to trade marks and designs, following reforms to patent legislation in 2004. Although the provisions of the Act will not take effect immediately, they are expected to enter into force in October 2017. As a result, practitioners and rights owners should be aware of the upcoming changes.

The Act replaces or amends the current groundless threats provisions in the relevant legislation relating to patents, UK and EU trade marks, UK registered designs, UK design rights and Community designs, and introduces several new changes which aim to make it easier for rights owners to enforce their IP rights. In particular, the Act:

• introduces a new two-part test for determining whether a communication contains a groundless threat;
• introduces a harmonised threats regime across the relevant legislation for the different IP rights;
• provides guidance as to permitted communications with secondary infringers, e.g., in the case of a trade mark, a retailer or distributor;
• introduces a defence when communicating with secondary infringers for the right owner to demonstrate that all ‘reasonable steps’ have been taken to discover the identity of the primary infringer to no avail, so long as certain conditions are met; and
• removes liability for regulated professional advisers subject to certain criteria being met.

The aim of the Act is to update the current framework in response to criticisms that the current legislation is overly complex, inconsistent and uncertain. In particular, the Act seeks to introduce certainty as to what constitutes a threat, therefore encouraging parties to enter into communications and resolve their IP disputes outside of court without fear of an unjustified threats action being brought against them.

For more information about this contact [email protected] or your usual Mathys & Squire contact.