Design Rights and Notification
Written by Jane Coyle on 22 April 2008« Return to Reading Room
The fact that notification of an IP right exists or is registered does not amount to a threat of proceedings. These provisions have been interpreted very narrowly by the courts; doing any more than sending, for example, a copy of the trade mark certificate and a covering letter drawing the recipient's attention to it, could potentially take an IP owner out of the exceptions and amount to an implied threat. In Jaybream Ltd v Abru Aluminium Ltd  FSR 597, the notification of a design registration in a letter which threatened proceedings for copyright infringement was held to be an actionable threat. The same could apply, if a letter threatening proceedings for passing off also notified the recipient of a trade mark registration. It seems that there is a fine line between a threat of proceedings and the mere notification of the existence of a design. Those wishing to take advantage of the provision should be careful not to fo further than what is permitted as a threat may well be inferred.
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