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Patents: Unjustified Threats Proceedings

Written by Riyaz Jariwalla on 27 June 2008

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Threats provisions were included in intellectual property (IP) legislation to address the concern that when threats to sue for infringement of intellectual property rights are made against companies, the risk of being involved in lengthy proceedings may result in them surrendering and consequently resulting in damaging the business, even if the intellectual property right is unjustified.

Threats provisions were introduced by the Patents, Trade Marks and Designs Act 1883. However, similar provisions relating to registered trade marks, registered designs and unregistered designs have been introduced and can be found as follows:

s 21 of the Trade Marks Act 1994 (TMA);

s26 of the Registered Designs Act 1949 (RDA);

s70 of the Patents Act 1977 (Patents Act), as amended by the Patents Act 2004 ; and

s 253 of the Copyright, Designs and Patents Act 1988 (CDPA).

The threats provisions in the Community Design Regulations 2005 were considered by the High Court in London in the case of Quads4Kids v Colin Campbell [2006] EWHC 2482 (Ch), 13 October 2006. This case concerned and found the court granting an interim injunction in favour of a seller on eBay, the internet auction site, against an owner of a Community registered design. The Court held that Community design owner's use eBay's intellectual property dispute policy (VeRO) that removed the seller's listing, amounted to an ‘arguable actionable threat under the Community Design Regulations 2005’.

No other country in the EU, save for the Republic of Ireland, has such statutory provisions in their current intellectual property law, however it could be that other national provisions cover such unjustified threats.

It is therefore imperative that should you threaten to commence proceedings against any proposed defendant, that you seek legal advice to ensure that your threats will not be considered as unjustified.

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