New legislation aims to simplify an area of IP law riddled with inconsistencies

The threats provisions in intellectual property law aim to deter owners of intellectual property rights from making unjustified threats of proceedings that may put unwarranted pressure on traders.

The current provisions are complex, inconsistent across the different rights and can lead to serious consequences if they are not followed carefully.

Stephen Welfare, Royds’ intellectual property partner, said that new legislation was designed to simplify the situation.

“The Bill proposes that the law on threats for Registered Trade Marks and Designs is brought into line with patents,” he said.

“In addition, in respect of all rights, a threat will not be actionable if it is made to a person that intends to carry out a primary act. The Bill aims to make it easier for parties to comply with their obligations under the Civil Procedure Rules.”

The Bill introduces “permitted communications” so that where certain conditions are met, communicating with someone committing a secondary act will not be actionable. This does not apply to express threats to sue for infringement, but allows communications for permitted purposes. For example, it is possible to provide factual evidence about a patent or seek information to identify an infringer, but it is expressly not permitted to ask someone to cease doing an act.

The other principle reforms are: the removal of the liability that professional advisers, such as lawyers, currently face for making threats; and changes to the law so that the threats provisions can apply to the unitary patent, which is expected to be introduced in 2017.

At Royds, our experts can provide comprehensive advice on all aspects of intellectual property law affecting business – we have particular expertise in the jewellery and luxury goods market. For more information please visit or contact Stephen Welfare or John North.