Unjustified threats of IP infringement

The key considerations when writing to persons or companies who are infringing a trade mark/patent/design right

Amazon apologised to a London fishmonger last month when their lawyers sent a letter demanding that he stop using the phrase “prime day boat fish” in his online sales material. Amazon holds a trademark for the words “Prime Day” (along with a very long, non-exhaustive list of other terms) and was concerned that customers may mistakenly associate the fishmonger’s business with Amazon’s annual Prime Day discount event. Amazon accepted the fishmonger’s explanation that “prime day boat fish” is an established term within the fishing industry, meaning fresh fish which has been sustainably caught on boats which spend only a short time at sea. Amazon later said that the email had actually been sent in error and apologised for any inconvenience caused.

There are a number of considerations for IP rights holders when they are looking to enforce their rights through pre-action correspondence.

The relatively recent Intellectual Property (Unjustified Threats) Act 2017 (‘the Act’) came into force on 1 October 2017 to codify the misuse of threats to intimidate or gain an unfair advantage in circumstances where no infringement of an IP right has actually occurred. The Act updated the regime for unjustified threats and introduced consistency across the range of IP rights, whether dealing with a trademark, patent or other right.

We wrote about the Act’s introduction and the key implications of this back in September 2017.

Falling foul of the Act entitles a person in receipt of an unjustified threat to raise proceedings to prohibit the threat continuing and to seek damages for loss caused by the threat.

Not every communication about potential IP infringements will constitute an unjustified threat, however. There are important exceptions which protect a brand rights owner from action being taken against them. The exceptions are separated by who it is that you are writing to.

Primary infringer

A primary infringer is someone who perpetrates a “primary infringement”, which is defined depending on the different IP rights (eg trade mark, patent, design right). Broadly, primary infringers are the persons perpetrating a direct infringement of an IP right, such as someone making or importing a product which infringes an IP right. In these circumstances, any threat made about such a primary infringement (or any threat to a primary infringer at all) is not actionable under the Act.

Secondary Infringer

Secondary infringement is, for example, only offering a product for sale, as opposed to making or importing a product. The Act is designed, mainly, to protect people who are being accused of this type of infringement.

However, the Act provides a “safe harbour”, which allows rights holders to write to secondary infringers setting out the following:

• Giving notice that an IP right exists;
• Discovering whether, or by whom, an IP right has been infringed (including finding out who the primary, main infringer is);
• Putting the secondary infringer on notice of the IP right that exists and who owns it, that may have relevance for any future infringement proceedings to follow

This is the extent to which IP rights holders can write to secondary infringers.

It can be of significant inconvenience, and can become very costly, to have to deal with unjustified threat proceedings when someone is looking to enforce their IP rights, where the intention was only to dissuade an infringer from taking any further steps to infringe your IP.

Therefore, the wording of any communication must be carefully crafted so that it adheres to the Act.