Threats

Question 1

When is a threat justified?

Answer 1

If it is shown that the act to which the threat relates was or would be infringing.

Question 2

Can a threat made regarding an invalid right be justified?

Answer 2

No

Question 3

Do the threats provisions apply to the unitary patent?

Answer 3

Yes

Question 4

Can threats be made in mass communications such as press releases?

Answer 4

Yes - do not have to be made to an identified individual.

Question 5

Does a threat need to be understood as being to bring UK proceedings?

Answer 5

No

Question 6

Can a threat relate to an act which if done would be in the UK (rather than an act already done in the UK)?

Answer 6

Yes

Question 7

Are threats made to a manufacture or importer of an allegedly infringing article, or threats made about the act of manufacture or importation, actionable?

Answer 7

No

Question 8

When is a threat actionable?

Answer 8

If you are a retailer, stockist or customer, or other person aggrieved by threats of infringement proceedings, you –or in all likelihood, whoever suffers loss should you stop taking their product – may be able to bring an action for unjustified threats.

Question 9

When can a retailer be threatened with litigation for infringement?

Answer 9

Is the person you want to write to an importer or a manufacturer of alleged infringing products?

If so, the threat would not be actionable – but threats to retailers, stockists are generally not allowed. These actors in the supply chain are likely to be the most harmed and the least harmful in terms of IP infringement.

If the trade source really can’t be found after taking reasonable steps to identify them, but (for example) a retailer can be, only then may the retailer be threatened with litigation for infringement.

Question 10

What are the remedies for unjustified threats? (3)

Answer 10

1. Declaration the threat is unjustified;
2. Damages
3. Injunction