Home > Reading Room > Exceptions to an actionable threat

Exceptions to an actionable threat

Written by Jane Coyle on 13 February 2008

« Return to Reading Room

Some activities by a suspected infringer will not be an actionable threat for an IP owner to threaten proceedings for the alleged infringement of its IP right. These allegedly infringing activities are set out in the following statutes: Patents (section 70(4), Patents Act): Making or importing a product for disposal; or Using a process. Trade marks (section 21(1), TMA):Applying the mark to goods or their packaging; Importing goods bearing the mark; or Supplying services under that mark. Designs (section 26(2A), RDA and section 253(3), CDPA):Making or importing anything.

The rationale behind these exceptions was that an IP owner should be able to put primary infringers on notice that he intends to sue, but that retailers and other traders further down the distribution chain should be protected from such threats. However, case law has confirmed that it is the acts of infringement which are excluded from the scope of the threats provision, and not the type of persons that can be threatened (see the Court of Appeal decision in Cavity Trays Limited v RMC Panel Products [1996] RPC 361, a patent case). As such, great care must be taken in the drafting of any letter of claim when seeking to take advantage of these exceptions and any threats made should specifically relate to the excepted acts set out in the relevant statute. This also extends to any undertakings enclosed with the letter of claim, as it could be argued that if the undertakings went wider than the exceptions, that the two together constituted an actionable threat. In Prince v Prince the judge said that if a writer wished to take advantage of the exception provisions, "it is incumbent upon him to indicate this in terms". Vague wording will be construed against the threatener.

If you'd like to know more about this article please send an email to Unknown quoting the article title and any questions you might have, alternatively call the office number on 02380 235 979 or send an enquiry through our contact form.

Want to speak
to someone?

Complete the form below and we’ll call you back free of charge.

Visual Captcha