New law is expected to come into force very soon,allowing businesses to take a legal action against IP rights holdersthat make “groundless threats” of IP infringement against them “much clearer”.
The government said “there is a case for sweeping away the existing rules” in the longer term and replacing it “with a UK-wide or EU-wide new tort in relation to making unfair allegations”. However, it has, for now, backed shorter term “evolutionary” changes to the existing rules instead.
According to the UK minister for IP Baroness Neville-Rolfe, the new reforms will protects businesses from being threatened unfairly, but will also allow businesses to settle disputes legitimately and enforce their rights.
The new bill will provide that rights holders that send certain types of communications to businesses should be not be able to be pursued by those businesses for making groundless threats. The government`s comment is that “some specific and non-limiting examples of such communications” in its proposed new legislation. However, there is a significant uncerainty considering the wording suggested by the Law Commission.
It had been recommended by the Law Commission that “communications should be excluded from the groundless threats provisions if they are made for a legitimate commercial purpose, and if the information given is necessary for that purpose”.
“The government agrees that the law should not be too inflexible; nor should it exhaustively list the types of specific excluded communications,” the government’s response to the Law Commission’s recommendations on ‘groundless threats’ reforms (5-page / 360KB PDF) said. “However, the government wishes to reflect further on whether defining excluded communications as ones that are made for a ‘legitimate commercial purpose’ is the right statutory definition, or whether it carries the risk of being interpreted too widely.”
“The government notes that an overly-wide interpretation could potentially remove any effective protection for secondary actors, despite any specific examples that may be present in the legislation,” it said.
According to the Law Commission’s recommendation, legal advisers should not be able to be pursued in a groundless threats action when communicating with businesses on behalf of rights holders was also accepted by the government. However, the new bill`s aim is will is to protect legal advisers where their communications to businesses “clearly identifies” who they are acting.