A person threatened with legal proceedings for some types of
intellectual property infringement may turn the tables on the
complainant by launching a "threats action" if the threats made are
unjustified. An unwary rights owner contemplating litigation can
therefore unexpectedly find himself on the receiving end of a Writ
if care is not taken when issuing threats.
The law on threats is unique to intellectual
property and exists to protect innocent traders from intimidatory
behaviour which could damage their business, for example, threats
of legal action made to a competitor or to customers, which could
cause product to be removed from sale and customers to withdraw
Threats legislation was first introduced last
century in relation to patent infringement. Later it was extended
to design infringement and, most recently is now applicable to
registered trade marks under the Trade Marks Act 1994. Notably
there are no parallel provisions applicable to copyright or passing
off, which makes little sense given that copyright is closely
related to registered design and design right and passing off is
closely related to trade mark infringement.
All of the statutory provisions allow threats to be
made by the owner of the relevant right in relation to "primary"
acts of infringement, notably manufacturing, importing and, in the
case of trade marks, the application of marks to goods or their
packaging and the supply of services under the mark. However, these
exceptions apply to infringing acts, rather than the type of
infringer. For this reason there is no danger in threatening a
manufacturer for manufacturing an infringing item, but there is a
danger in threatening a manufacturer for using or selling it. This
may not seem logical given that manufacturers inevitably sell the
products which they make. However, this approach, which follows the
wording of the legislation to the letter, has been confirmed by
recent case law (Cavity Trays Limited v RMC Panel Products Ltd
 RPC 361)
All of the relevant legislation provides that mere
notification of the existence of the right does not constitute a
threat; for example, wording along the lines of "We put you on
notice that our clients are the proprietors of the trade mark XXX
registered under number YYY". Clearly this type of communication,
at least to an infringer unfamiliar with the threats legislation,
may be ineffective and meaningless in practical terms. However,
those who are familiar with intellectual property law will be able
to "read between the lines"!
Who may bring a threats action?
If an actionable threat is made, "any person
aggrieved" may bring proceedings. This may not necessarily be the
person threatened. Proceedings could, for example, be brought by a
manufacturer whose retail customers have been threatened. The
action will usually be directed against the owner of the right in
question. However, professionals such as solicitors and patent and
trade mark agents may be, and often are, joint defendants in the
Threats actions are often commenced by applications
for ex parte injunctions, in which the person aggrieved will be the
plaintiff. Alternatively a threats action may form a counterclaim
to an infringement action in which the person aggrieved will be the
defendant. Many victims of threats will want to take the initiative
by commencing proceedings themselves. Suing as plaintiff offers the
tactical advantages of controlling the case, opening and closing in
Court and strengthening the perception of being a "victim", rather
than being seen simply to be reacting to an infringement
How can a threats action be defended?
Threats actions can be defended by a successful
infringement action in which the owner of the right shows that the
threat was justifiable. The owner of the right therefore has to
show that the right is valid and subsisting and that the
plaintiff's acts would have infringed that right.
What relief is available?
A plaintiff in a threats action is entitled to
claim an injunction against the making of further threats, a
declaration that the threats are unjustifiable, damages resulting
from the threats and costs. In many cases where proceedings are
commenced after a threat has been made, it may be very difficult
for the plaintiff to show that it is the threat, rather than the
commencement of proceedings, which has caused the damage. Even if
no damage has resulted, the threatener (or his solicitors or
patent/trade mark agents) may be liable for the considerable costs
of the litigation, including the costs of an inquiry into
The Courts have interpreted the threats legislation
very widely in favour of the "victim". The following points have
been established by case law:
- Actionable threats may be made by letter, circular,
advertisement, orally or in any other way. A series of
communications should be considered as a whole.
- A threat made in an advertisement or circular, although not
naming the plaintiff specifically, may still be an actionable
threat if it is clearly directed at one particular trader. However,
general warnings which are not aimed at any particular trader will
not be actionable.
- A threat does not explicitly have to threaten proceedings, but
will be actionable if the recipient reasonably believes that there
is an intention to bring proceedings. In other words an objective
"reasonable man" test is used.
- If a writ has been issued before threats are made, it is
generally considered that no threats action can lie.
- The Court of Appeal in Brain v Ingledew Brown  FSR 341)
clarified that a threat under a pending application should be
construed as a threat to bring proceedings once a patent had been
granted and that the threat could be justified so long as the
patent had been granted by the time of the trial. Presumably, this
would also apply in relation to registered trade marks and
- A non-actionable threat (e.g. for copyright infringement)
coupled with notification of the existence of a patent, trade mark
or design may be actionable if the reasonable man would believe
that the communication constituted a threat to sue for infringement
of both copyright and the other right mentioned.
- It is not a defence to a threats action that the proceedings
threatened were foreign rather than UK proceedings (Prince plc v
Prince Sports Groups  unreported).
What can you do?
While the issue of threats is a familiar one in
patent law, we have yet to see significant case law in the trade
mark field. The legislation is far from straightforward and many
would-be litigants are running unnecessary risks when issuing
threats of proceedings to others.
Remember the following to minimise the risks:
- It is safe merely to notify someone of your rights.
- It is safe to threaten proceedings only in relation to acts
which are exempt, in particular, manufacturing or applying a mark
to goods or the use of a mark in relation to a service.
- It is safe to threaten in respect of infringement of copyright
only or passing off only. However do not mix this type of threat
with a notification of the existence of a patent, trade mark or
- Issuing proceedings first should avoid the risk of a threats
Equally, if you are on the receiving end of a
threat, consider whether to raise the issue of a threats action:
the threatener may have acted carelessly and could be put off from
taking the dispute to litigation with the prospect of a threats
action on the horizon.