At the end of April, the new Intellectual Property (Unjustified Threats) Act 2017 received Royal Assent, with an expectation the provisions will come into force in October.
As we reported last February, the new threats legislation had been steadily marching through parliament and, despite the snap general election which had been called mid-April, the Bill (as it was) remained on the agenda and received Royal Assent on 27 April.
What is it again?
This new Act amends existing legislation which relates to the making of unjustified threats to bring legal proceedings against a person or company for infringement of a patents, registered trade marks, unregistered design rights or registered designs. In short, it offers the recipient of a legal threat a cause of action where the threat is ‘groundless’. The recipient of the threat can ask the court for a declaration that the threat was unjustified, damages and an injunction against further threats.
Why did it need changing? In 2014 the Law Commission published results of a consultation that looked at a variety of concerns on how the current law operated. There were many findings, including variations on how the threats provisions operate from right to right, the lack of distinguishing (with the exception of patents) between ‘primary’ infringers and ‘secondary’ infringers/acts, and little guidance on what constitutes a threat. There was also concern that the current threats provisions were stymieing any attempts to settle the matter before issuing in court.
As we reported previously, this new law is an attempt to redress the balance between the parties by making the provisions more consistent across the breadth of the main IP rights (although copyright, passing off and confidential information claims still remain uncovered by the threats provisions), by modifying the test (would the reasonably person in the place of the recipient understand the communication to mean imminent legal proceedings), and new ‘safe harbours’ for those rights-holders merely searching for information (“permitted purposes”).
Some commentators have stated that this is a mere tinkering of the rules instead of a complete overhaul, but it appears universally accepted that changes were long overdue. Like any law that has had an overhaul, there is always a bedding-in period and requires the court’s interpretation before it is properly understood.
As the threats provisions provide legal recourse to someone on the end of ‘groundless threat’, it remains our view that you should speak to your regular Briffa advisor before making any allegations of infringement.