After much discussion about a change in the law, the Intellectual Property (Unjustified Threats) Bill has gone through the last stage and is set to come into force.
On 27thApril the bill was given Royal Assent, where the Queen gives her approval on the bill. This is the last formality a bill has to go through before it is fully approved and steps will be made to prepare for the change in the law it brings.
The Act will bring a number of changes to the law relating to Unjustified threats, as well incorporating some of the existing rules.
A summary of the system with the additions is as follows:
The test for whether a communication contains a threat will become an objective test, looking at what a reasonable person in the position of the recipient of the communication would understand. There will also be a UK requirement added, in relation to the act done, which will allow the provisions of the Act to apply to European patents under the upcoming UPC system.
There has been an introduction of a new concept, ‘permitted communication’. This will cover a situation where an implied threat has been made, but an action cannot be taken as the information was given for a ‘permitted purpose’.
Examples have been given of what is deemed as a permitted purpose, which includes,
- giving notice that a registered trade mark exists;
- discovering whether, or by whom, a registered trade mark has been infringed by an act mentioned in section 21A(2)(a), (b) or (c);
- giving notice that a person has a right in or under a registered trade mark
Also, the following has been given as examples that will not be treated as a ‘permitted purpose’,
- Requesting a person to cease using, in the course of trade, a sign in relation to goods or services,
- Requesting a person to deliver up or destroy goods, or
- Requesting a person to give an undertaking relating to the use of a sign in relation to goods or services.
Another update under the new Act is that Professional advisors will no longer be capable of being sued for unjustified threats so as long as they can show they were acting on the instructions of another person doing so in their capacity as a legal advisor.
The new provisions are thought to become law in October 2017, therefore there is not long to wait to see how these changes will impact on actions taken against unjustified threats within IP.
What you can be sure of it that Lawdit will be on the cusp of any new developments and will report them as soon as they become apparent.