Rights holders can be very protective of the fruits of their intellectual efforts (and rightly so). However, many are unware that when they threaten proceedings for infringement of trade marks, design rights or patents, they may themselves fall foul of the law. Unless the threat (which can take many forms) falls within one of the statutory exceptions, the aggrieved party (i.e., the party whose commercial interests suffer because of the threat) could itself sue.
Groundless threats can be misused to stifle inventions and distort competition. The issue is not new (threats provisions introduced for patents date back to Victorian times1). The new Intellectual Property (Unjustified Threats) Act 2017 (the Act) seeks to enhance the protection afforded to businesses and individuals against misuse of threats and foster an environment in which disputes that could be easily settled are not hauled in front of the courts. The substantive provisions of the Act come into force on 1 October 2017. Sections concerning territory, commencement and short title came into force in April 2017 (when the Act received Royal Assent). Although the Act extends the scope of some of the existing law, it is worth noting that other intellectual property rights, such as copyright, passing-off rights and breach of confidence, do not fall within its ambit.