In the case of Tech 21 UK Ltd v Logitech Europe S.A.  EWHC 2614 (Ch), the High Court in London handed down a judgment addressing its jurisdiction to hear cases to its for groundless threats of court proceedings for infringement of Community unregistered design right.
In the UK, a party can bring a claim against another party which has threatened it with infringement proceedings in respect of certain intellectual property rights, including patents, trade marks and designs, which are found to be invalid or which are subsequently revoked.
The provision of a groundless threats action was recently extended to European unregistered design right.
The current case concerned protection cases and covers for the popular iPad tablets. Tech 21 received a letter from Logitech's German lawyers claiming the iPad case sold by the two companies were almost identical, citing Community unregistered design rights. Tech 21 then sought to bring proceedings in the UK for groundless threats, seeking a declaration that Logitech did make a groundless threat to bring infringement proceedings and a declaration of non-infringement of any Community unregistered design right.
The UK High Court ruled that it had jurisdiction to hear the claim for groundless threats but not to make the declaration of non-infringement sought by Tech 21 – that claim had to be brought in the home county of Logitech which, in respect of this matter, was deemed to be the Netherlands or Croatia.
In respect of groundless threats, the test is largely reflective of whether a reasonable business person would understand that a threat of legal action in the UK for allegedly infringing unregistered Community design rights to be serious and likely to be followed through in the near future.
Threatening legal action in respect of intellectual property rights is a serious thing to do, and any person making such threats without proper reason could potentially be liable for the damage suffered by the person they threatened, if it later transpires the intellectual property right(s) in question are not valid and subsisting.
If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or email@example.com: Designs, EU/International, News