Unjustified Threats Bill receives royal assent

The the Intellectual Property (Unjustified Threats) Bill received Royal Assent on 27 April 2017.  It is
expected to commence in October 2017.

What will change?

In summary:

1. The test for whether a communication contains a threat will effectively become would a reasonable person, in the in the position of a recipient of the communication understand it to mean that:

• a right exists (no change);
• someone intends to bring infringement proceedings against someone else (no change);
• for an act done in the UK, or if done, would be done in the UK (new).

(The final requirement was added to ensure that the provisions can apply to European patents that come within the jurisdiction of the UPC.)

2. The circumstances in which someone (i.e. the person aggrieved) can bring a threats action has been updated to exclude:

• Threats that refer only to specified acts, such as manufacture or importation that have been done (no change) or if done, would be one of these acts (new).
• Any threats made to those who have done one of those acts (no change for patents, but new for the other rights) or who intend to (new).
• Implied threats contained in a permitted communication (new). 

3. The concept of a "permitted communication" between parties is introduced. In other words, this covers a situation where information in a communication amounts to an implied threat, a threats action cannot be brought where the information was given for a "permitted purpose", was necessary for that purpose and the person making the communication reasonably believed what is said is true. There is guidance on what is, or is not, a permitted purpose and on what types of information might be necessary.  By way of example, for trade marks:

(2) Each of the following is a “permitted purpose”—
(a) giving notice that a registered trade mark exists;
(b) discovering whether, or by whom, a registered trade mark has been infringed by an act mentioned in section 21A(2)(a), (b) or (c);
(c) giving notice that a person has a right in or under a registered trade mark, where another person’s awareness of the right is relevant to any proceedings that may be brought in respect of the registered trade mark. 

Reaction to an unjustified threat

However, it doesn't end there because:

(3) The court may, having regard to the nature of the purposes listed in subsection (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so.

And

(4) But the following may not be treated as a “permitted purpose”—
(a) requesting a person to cease using, in the course of trade, a sign in relation to goods or services,
(b) requesting a person to deliver up or destroy goods, or
(c) requesting a person to give an undertaking relating to the use of a sign in relation to goods or services.

4. The available remedies are unchanged.  The available defences are updated to:

• allow the justification defence (i.e. the defence that the threat was justified) to be available where the right is shown to be invalid. 
• It is a defence to show that the threat was only made after having taken "reasonable steps" to identify the source of the infringement (e.g. manufacturer) without success (currently only available for patents). The recipient of the threat must be told what those steps were before or at the time the threat is made. 

5. Professional advisers can no longer be sued for unjustified threats.  In other words, no threats action can be brought against a professional adviser acting for a client in a professional capacity providing legal or attorney services for which they are regulated.  In order to qualify for this defence, the communication containing the threat must make clear that the professional adviser is acting on the instructions of another person and identify that person.

For full details see this Kat post from May last year.