New law on unjustified threats: greater clarity

New legislation to clarify and harmonise the law on unjustified threats in respect of intellectual property infringement applies from 1 October. For many years there has been provision under English law that a threat to enforce registered intellectual property rights (IPRs) through infringement proceedings may itself be actionable. The aim of the legislation was to deter owners of IPRs from making unjustified threats of proceedings that may put unwarranted pressure on traders. However, the provisions, which produce serious consequences if not followed carefully, have often been criticised for being complex and inconsistent.

The Intellectual Property (Unjustified Threats) Act 2017 introduces a more consistent set of rules, bringing the threats provisions in relation to registered trade marks and designs into line with those relating to patents. It also seeks to redress the balance between rights holders and potential infringers. Our briefing which first appeared in in PLC Magazine, October 2017, provides an overview of the new regime, highlighting the changes of which rights owners should be aware and considers those areas where ambiguity remains.