Amendment to Groundless Threats Provisions

The law relating to groundless threats of Intellectual Property ("IP") infringement may be about to change.

According to the current law on groundless threats, if you make allegations of infringement against a third party and there is no actual infringement then you would be making a groundless threat.

Patents, designs and trade marks legislation all include provisions for groundless threats. For example, the UK Trade Marks Act includes section 21 which states that:

(1) Where a person threatens another with proceedings for infringement of a registered trade mark other than:

(a) the application of the mark to goods or their packaging,

(b) the importation of goods to which, or to the packaging of which, the mark has been applied, or

(c) the supply of services under the mark,

any person aggrieved may bring proceedings for relief under this section.

(2) The relief which may be applied for is any of the following:

(a) a declaration that the threats are unjustifiable,

(b) an injunction against the continuance of the threats,

(c) damages in respect of any loss he has sustained by the threats;

and the plaintiff is entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.

An infringement threat can be groundless if there is no actual infringement or if the IP rights relied on are invalid. Any person involved in making a threat of infringement can be sued if the threat is groundless, including solicitors and any other IP advisor.

The reason for the inclusion of groundless threats provisions in IP law is so that right holders can threaten primary infringers such as the manufacturer or importer of infringing goods but secondary infringers such as retailers will be protected from groundless threats of infringement.

The current groundless threats provisions mean that owners of IP may be more inclined to issue proceedings without writing to potential infringers to attempt to reach a settlement and avoid litigation.

Following a lengthy campaign by the Law Society, the Law Commission has published a draft bill to implement recommendations to reform the law on groundless threats. The government has accepted the recommendations.

The reforms should clarify this area of law and bring consistency to how the threat provision applies to each IP right. The new law will allow right holders to contact potential infringers, provided their communication has a legitimate commercial purpose, without being pursued by those businesses for groundless threats.