Exceptions to an actionable threat

Some activities by a suspected infringer will not be an actionable threat for an IP owner to threaten proceedings for the alleged infringement of its IP right. These allegedly infringing activities are set out in the following statutes: Patents (section 70(4), Patents Act): Making or importing a product for disposal; or Using a process. Trade marks (section 21(1), TMA):Applying the mark to goods or their packaging; Importing goods bearing the mark; or Supplying services under that mark. Designs (section 26(2A), RDA and section 253(3), CDPA):Making or importing anything.

The rationale behind these exceptions was that an IP owner should be able to put primary infringers on notice that he intends to sue, but that retailers and other traders further down the distribution chain should be protected from such threats. However, case law has confirmed that it is the acts of infringement which are excluded from the scope of the threats provision, and not the type of persons that can be threatened (see the Court of Appeal decision in Cavity Trays Limited v RMC Panel Products [1996] RPC 361, a patent case). As such, great care must be taken in the drafting of any letter of claim when seeking to take advantage of these exceptions and any threats made should specifically relate to the excepted acts set out in the relevant statute. This also extends to any undertakings enclosed with the letter of claim, as it could be argued that if the undertakings went wider than the exceptions, that the two together constituted an actionable threat. In Prince v Prince the judge said that if a writer wished to take advantage of the exception provisions, “it is incumbent upon him to indicate this in terms”. Vague wording will be construed against the threatener.

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