Brands: Intellectual Property Infringement and "Threats Actions".

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 their business.

The legislation

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 [1996] 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 action.

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 action.

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 damages.

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 [1996] 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 registered designs.
• 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 [1997] 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 design.
• Issuing proceedings first should avoid the risk of a threats action.

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.