Who is liable for threats in design law?

Statutory provisions provide that any “person” making the threats can be sued. As “person” is not defined or qualified, it is potentially very wide and could include not just the IP owner, but a licensee, user or anyone else, whether or not they have an interest in the IP right in respect of which the threats are made. The instigator can be an individual or a company. Companies may be vicariously liable for threats made by their employees and agents under the normal principles of tort. Consequently, even if employees are expressly prohibited from making threats, the company could still be liable. Employees should be made aware of the implications of making threats, whether orally or in writing. Solicitors, patent and trade mark agents, who make threats on behalf of their clients can be sued. For example, in the patent case of Brain v Ingledew (No. 3), a firm of solicitors was found liable. This can make the relationship between client and adviser uncomfortable: clients can find it difficult to understand why their adviser is unwilling to write a letter of claim, appearing to prefer a “sue first, negotiate later” strategy. To protect their position advisers may ask for an indemnity from a client on whose behalf a potentially threatening letter is written.

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