If the act which is the subject of a threat is shown to be an infringing act, or an intended act that (if carried out) would be infringing, the threat is justified. Justified threats of infringement are allowed. A person having made a threat may defend themselves in an unjustified threats action by showing that the threat was justified because infringement actually occurred or was intended.
A defence introduced by the 2004 reforms for patents has now been replicated across designs and trade marks. This makes the law consistent across the relevant rights. The defence allows businesses and individuals to threaten to sue alleged secondary infringers of their IP, where a primary actor (a manufacturer or importer) cannot be found. This allows the rights holder to prevent further commercial damage where they believe that infringement is occurring, or would occur.
A person who has made a threat to a person who is not a primary actor has a defence if they can show:
- that they have taken reasonable steps to identify a primary actor but have not been able to identify anyone; and
- that they have notified the person to whom they made the threat of the steps taken to find a primary actor; and
- the notification was given either before or at the time of making the threat.
This defence applies the principle that a rights holder must try to direct any threats towards an alleged primary actor. Only where they have been unable to find an alleged primary actor despite taking reasonable steps to do so is the new defence available. The person being threatened must be informed of the steps taken to identify an alleged primary infringer. It is important to note that, if the steps taken identify a primary actor, this defence is no longer available. This is the case even where it may appear likely that there is more than one primary actor, such as more than one importer or manufacturer of the product.
What will satisfy the requirement of taking ‘reasonable steps’ will depend on the particular circumstances of a case. Where appropriate, a reasonable step is the use of the permitted communications exception to discover whether a primary act has been committed and by whom. There may be circumstances where it would be reasonable to pursue all possible lines of enquiry available, however there may also be circumstances where it is reasonable to do much less.
Protection against threats action is now provided to regulated professional advisers acting on behalf of a client. The protection does not affect the principle that anyone (not just the rights holder) may be liable for making a threat. Where the adviser makes a threat to a third party any underlying liability for doing so remains intact, as does any liability that may accrue under the general law of agency. The instructing client also remains fully liable for any unjustified threat that is made. The protection works by preventing threats action being brought against the adviser.
Under the new law, a threats action cannot be brought against a professional adviser providing that the adviser satisfies both of the following conditions:
- They are acting on the instructions of a client.
- They have identified that client to the person with whom they are communicating.
The protection applies to any adviser meeting the following conditions:
- They are acting in a professional capacity in providing legal or attorney services.
- They are regulated by a regulatory body in the provision of those services.
Often, advisers will be acting for a single client who gives specific instructions in respect of a dispute. However, the protection also applies to in-house advisers who may not be instructed on a case-by-case basis but under a general mandate to protect their employer’s IP rights. In either case, the adviser is acting on the instructions of another and not of their own volition. The protection is not restricted to UK or EU advisers and applies equally to foreign advisers provided they meet the above conditions.