New legislation over threats

New legislation due to become law on 14th October 2017. It can be found here

URL
http://www.legislation.gov.uk/uksi/2017/771/pdfs/uksi_20170771_en.pdf

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The 2017 Act makes amendments to the law relating to unjustified threats to bring proceedings for infringements contained in the Registered Designs Act 1949, the Patents Act 1977, the Copyright, Designs and Patents Act 1988, the Trade Marks Act 1994, the Community Design Regulations 2005 and the Community Trade Mark Regulations 2006.

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The Act is intended to encourage the resolution of disputes and implements long overdue reforms bringing the law regarding threats in relation to trade marks and designs in line with that relating to patents. The law regarding unjustified threats in relation to IP rights remains a potential minefield. The tort remains one of strict liability with no requirement of intention, only what is reasonably understood about the intention.Â

Even when the changes in the Act come fully into force certain key concepts will require interpretation: for example, the extent to which the courts will exercise their discretion to extend the scope of a permitted purpose in relation to permitted communications beyond those specified, and the question of when a communication is necessary for a permitted purpose. Also unclear is what amounts to reasonable steps that need to be taken before a person making a threat can rely on the defence of last resort allowing one to contact secondary actors where no primary actor can be found, although there may be guidance from patent law where this defence has been previously available.

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