Threateners don’t fret, your concerns may just have been met…

A peculiarity of intellectual property law is those provisions which make it actionable in itself to threaten bringing infringement proceedings against another party. These provisions, which apply to claims of trade mark, patent and design right infringement (but not copyright), are often a bee in the bonnet of the litigator, forcing him or her to deploy ingenious tongue-twisting language to dodge an unlawful threats bullet. Help is at hand. Following earlier reports here, comes news from Julia Jarzabkowski, a fellow Deputy District Judge but more pertinently the lead lawyer at the Law Commission considering reform in this area. Julia has exciting news to report:

“The Law Commission has published its report on the groundless threats provisions for patents, trade marks and design rights today, 15 April 2014. It was clear from consultees' responses that there is an appetite for reform and a desire that this happens sooner rather than later. Contrary to our usual practice the report does not include a draft bill; we hope that an early opportunity can be found to introduce legislation to enact new provisions on groundless threats to cover patents, trade marks and design rights (registered and unregistered).

Our recommendations will make the law clearer, easier to follow and apply, and will ensure that the protection against threats is more consistent between the rights. We consulted on two models for reform. The first, which enjoyed overwhelming support, builds upon the changes made for patent law in 2004. We recommend that the majority of those reforms should also apply for trade marks and design rights. The second model we proposed was to replace the existing provisions with a new cause of action for making false allegations in the course of business; it is loosely based on the Paris Convention. Overall, consultees felt that this was too big a change for the immediate future, but many recognised the long-term benefits such a reform would bring. Although our recommendations will tackle the most pressing problems in the law they do not deal with the more fundamental issue of the uneasy relationship between national law and the enforcement of European and Community IP rights (both current and future). For that we believe that wider reform may eventually become necessary.

We have made a total of 18 recommendations, some are quite detailed. These are the headline reforms:

Dealing with the "Cavity Trays" problem and intended acts: The principle that a threats action cannot be brought for threats that refer to particular acts gave rise to the "Cavity Trays" problem, which is that threats that stray beyond this restriction remain actionable. This was solved for patents. A threats action cannot be brought where threats to sue are made to those who have carried out the excluded acts, even where any other act is referred to. We recommend the same fix for trade marks and design rights. We have gone further to recommend that this also applies to threats in respect of intended acts. This will allow a rights holder to move quickly against those who are likely to inflict the greatest commercial damage.

Legitimate communication with secondary actors: Consultees wanted a "safe harbour" within which rights holders and those who act for them could communicate with secondary actors who would ordinarily be able to rely on the threats provisions. It was clear from responses that the current law obstructs legitimate communication, even where disputing parties are obliged to make contact. This can make compliance with the obligations imposed by the Civil Procedure Rules like navigating a minefield. We recommend that communication will be permitted where there is a legitimate commercial purpose behind it, for example, where contact is made in order to track down the source of the infringement or to remove an innocence defence. We also recommend that the legislation provides guidance through examples and in the form of a non exhaustive list as to the kind of information that may be communicated. As a check on abuse this exclusion from liability for making threats will only apply where the person seeking to rely on it has reasonable grounds for believing that the information communicated is true.

Professional adviser liability: As professional advisers are sometimes made painfully aware, liability for making threats to sue is not limited to the rights holder. Advisers, even when acting on clients’ instructions can be jointly liable for threats. This can cause problems, not least that this allows the threats provisions to be used tactically against advisers (obviously not by anyone reading this). Advisers may act more cautiously or ask for an indemnity. As a consequence the task of explaining to a client an already complex area of law can become even more onerous. We recommend that a lawyer, registered patent attorney or trade mark attorney should not be liable for threats when acting in their professional capacity and on clients’ instructions.

We have been greatly helped throughout this project by so many people who have been generous with their time and energy. We would like to take this opportunity to offer our warm thanks. The full report, an executive summary and the consultation responses are available at on our website: www.lawcom.gov.uk.”

These all look like sensible conclusions – in this Kat’s humble opinion – and they are likely to be welcomed by practitioners and rightsholders.

Merpel has never heard of “Cavity Trays”, but Google tells her they are something to do with damp proofing. Never one to turn down a warm, dry shelter to snuggle down in, Merpel is giving this one a claws up.

Here's a link directly to the report page.