New threats reform bill published

United Kingdom

This article was produced by Nabarro LLP, which joined CMS on 1 May 2017.

Summary and Implications

Following the UK Government’s response to the Law Commission’s 2014 report (see our previous alert of 4 March 2015), the Law Commission has published its second and final report, and has drafted the Intellectual Property (Unjustified Threats) Bill, which implements reforms it had recommended in its 2014 report.

The Bill takes into account the Government’s comments, but it still follows the vast majority of the Law Commission’s 2014 recommendations.

Summary

The Law Commission’s final report explains the new Bill and it includes two new recommendations.

The first is to extend the protection of the threats provisions to Unitary Patents and to European Patents (UK) that fall under the exclusive jurisdiction of the Unified Patent Court.

The second is the introduction of a new test for whether a communication contains a threat, which is that a reasonable person in the position of a recipient would understand from the communication that a person: (i) has an IP right; and (ii) intends to bring proceedings against another person for infringement of one or more of those rights in respect of acts done (or to be done) in the UK.

Many people remain unhappy with the “evolutionary approach to reform” adopted by the Law Commission. For example, Sir Robin Jacob’s consultation response concluded that “tinkering with this will serve no useful purpose”. The Law Commission has itself concluded that serious consideration should be given to introducing a new tort of false allegations.

Nonetheless, if enacted, the new Bill would introduce some much-needed consistency and clarity to the law of unjustified threats, bringing the law for trade marks and designs in line with that for patents. The new Bill provides a clearer framework within which parties can make good faith attempts to resolve disputes; businesses can safely threaten other parties for infringing their IP rights; and professional advisers are protected from being sued for making threats on behalf of their clients.