When is an IP claim a ‘’threat’’?

When issuing notifications about potential IP infringements, senders should be aware of the communications permitted in their circumstances, or they run the risk of their notifications being interpreted as containing a threat and eliciting a threats action.

The UK Intellectual Property Office has recently published guidance on the Intellectual Property (Unjustified Threats) Bill, which sets out the legal framework of threats to sue for infringement of patents, trade marks, or designs.

The guidance explains the new statutory ‘’test for a threat’’ that outlines the principles to be used by the court when determining whether a communication contains a threat. It applies to communications directed at individuals, the general public, or any section of the public.

The new test is largely based on the current one. It only differs in that rather than being understood to be to bring proceedings in a UK court, the threat must now be understood to be to bring proceedings in a court for an act done, or intended to be done, in the UK.

The test is considered from the standpoint of a reasonable person in the position of a recipient. Even if no threat is intended, if it is deemed that a reasonable person would understand that proceedings were intended to be brought for the infringement of an existing IP right, the communication will be judged to contain a threat.

The guidance further outlines when a threat is actionable, what is permitted in communications, and what remedies and defences are available.

For more information please see Intellectual Property (Unjustified Threat) Bill: guidance or contact Hamlins IP partner Matthew Pryke.