Making threats in Intellectual Property Cases
3 November 2008
Be careful who you threaten in Patent and Design cases
If you feel your patent or design is being infringed then it is necessary to write to the alleged infringer claiming that your design or patent is being infringed. However care must also be exercised that when threats to sue for infringement are made against traders.
Threats provisions are included for Patents Registered Designs and Unregistered Designs only.
Section 70 of the Patents Act 1977 (Patents Act), as amended by the Patents Act 2004.
Section 21 of the Trade Marks Act 1994 (TMA).
Section 26 of the Registered Designs Act 1949 (RDA).
Section 253 of the Copyright, Designs and Patents Act 1988 (CDPA).
While you have to tread carefully the courts do test whether or not a threat has been made objectively a threat may be made orally or in writing and if made is understood by the ordinary person as being a threat of infringement proceedings (Brain v Ingledew Brown Bennington & Garrett (No.3)  FSR 511).
Extra care needs to be taken to ensure that the threat is not read in the context of a series of communications as a whole. So a document which is not threatening may well be threatening when read in context.