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The Intellectual Property (Unjustified Threats) Act 2017 Business Guidance – statutory test

This guidance gives a general overview of the changes, almost all of which are expected to come into effect on 1 October 2017. The Act aims to improve the balance between a rights holder’s ability to protect their IP right while providing adequate protection to persons affected by unjustified threats.

The changes provide the test for a threat. A new statutory test sets out the principles the court will apply in order to decide whether a communication contains a threat to sue for the infringement of a patent, trade mark or design. The test has two parts; both parts are considered from the position of a reasonable person in receipt of a communication.

The first part is whether a reasonable person would understand from the communication that a patent, trade mark, or design (i.e. an IP right to which threats provisions apply) exists. The second part is whether the reasonable person would understand that a person intends to bring proceedings against another person for infringement of the right by an act done in the UK.

Threats need not be made directly to an identified individual to satisfy the test. A threat can be made in a more general way but must be more than a general warning. A threat may be made by mass communication, and in such cases the reasonable person will be a recipient who is a member of the public, or a member of the section of the public to which the communication was directed.

As the threats provisions are part of domestic law, in order for them to apply there must be some link between the threat to sue for an infringement, and the UK. The threat must be understood to be a threat to bring proceedings for an act done (or intended to be done) in the UK. If a communication contains a threat (as determined by the new test) then the next step in applying the new law is to see if someone is entitled to bring a threats action in respect of that threat.

Any person aggrieved by a threat may bring a threats action unless one of the exceptions applies. A “person aggrieved” means any person whose commercial interests have been or might be affected by the threat in a real rather than a fanciful way. Action for unjustified threats is not available where the threat is in respect of an allegedly infringing primary act. The law has, however, been amended to extend the exception to threats that refer to intended primary acts.

A person who has carried out, or intends to carry out, a primary act cannot bring an action for threats made against them which refer to related secondary acts. This allows threats made to primary actors to also refer to secondary acts done by that primary actor. Importantly, this only applies where the mentioned secondary act is in relation to the same product/article as the primary act.

A threat will be considered to be made when the communication containing the threat is sent, rather than when it is received, for example. This places the responsibility on the sender to be aware of the law of unjustified threats as it applies at the time of sending a communication.

This applies irrespective of whether a communication is part of a “string” of communications, a single event, or a person sending a communication in a string of communications starting before but continuing after the commencement date must be aware that each communication will be considered under the law as it was when the communication was sent. A communication may, therefore, not “retain” status to be treated under the old law by virtue of being part of a string of communications which started before the commencement of the Act.