The IP (Unjustified Threats) Act came into law on 27 April following Royal Assent.  As you are aware, the Bill was to amend the law relating to unjustified threats to bring proceedings for infringement of patents, registered trade marks, rights in registered designs, design right or Community designs.

Anti Copying in Design (ACID) is a member of The Alliance for Intellectual Property and each week The Alliance creates a parliamentary update which ACID shares with its members.

Intellectual Property (Unjustified Threats) Act 2017

IP Kat provided a summary this week on what the legislation changes:

1. The test for whether a communication contains a threat will effectively become would a reasonable person, in the in the position of a recipient of the communication understand it to mean that:

• a right exists (no change);
• someone intends to bring infringement proceedings against someone else (no change);
• for an act done in the UK, or if done, would be done in the UK (new).

(The final requirement was added to ensure that the provisions can apply to European patents that come within the jurisdiction of the UPC.)

2. The circumstances in which someone (i.e. the person aggrieved) can bring a threats action has been updated to exclude:

• Threats that refer only to specified acts, such as manufacture or importation that have been done (no change) or if done, would be one of these acts (new).
• Any threats made to those who have done one of those acts (no change for patents, but new for the other rights) or who intend to (new).
• Implied threats contained in a permitted communication (new).

3. The concept of a “permitted communication” between parties is introduced. In other words, this covers a situation where information in a communication amounts to an implied threat, a threats action cannot be brought where the information was given for a “permitted purpose”, was necessary for that purpose and the person making the communication reasonably believed what is said is true. There is guidance on what is, or is not, a permitted purpose and on what types of information might be necessary.  By way of example, for trade marks:
(2) Each of the following is a “permitted purpose”—

(a) giving notice that a registered trade mark exists;
(b) discovering whether, or by whom, a registered trade mark has been infringed by an act mentioned in section 21A(2)(a), (b) or (c);
(c) giving notice that a person has a right in or under a registered trade mark, where another person’s awareness of the right is relevant to any proceedings that may be brought in respect of the registered trade mark.

However, it doesn’t end there because:
(3) The court may, having regard to the nature of the purposes listed in subsection (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so.
And
(4) But the following may not be treated as a “permitted purpose”—

(a) requesting a person to cease using, in the course of trade, a sign in relation to goods or services,
(b) requesting a person to deliver up or destroy goods, or
(c) requesting a person to give an undertaking relating to the use of a sign in relation to goods or services.

4. The available remedies are unchanged.  The available defences are updated to:

• allow the justification defence (i.e. the defence that the threat was justified) to be available where the right is shown to be invalid.
• It is a defence to show that the threat was only made after having taken “reasonable steps” to identify the source of the infringement (e.g. manufacturer) without success (currently only available for patents). The recipient of the threat must be told what those steps were before or at the time the threat is made.

5. Professional advisers can no longer be sued for unjustified threats.  In other words, no threats action can be brought against a professional adviser acting for a client in a professional capacity providing legal or attorney services for which they are regulated.  In order to qualify for this defence, the communication containing the threat must make clear that the professional adviser is acting on the instructions of another person and identify that person.

Home Affairs Select Committee: Social Media

The Home Affairs Select Committee has criticised social media companies for failing to take down and take seriously illegal content.  

“The Committee recommends the Government should assess whether failure to remove illegal material is in itself a crime and, if not, how the law should be strengthened. They recommend that the Government also consult on a system of escalating sanctions to include meaningful fines for social media companies which fail to remove illegal content within a strict timeframe.”

It also states:

“The Committee also criticised social media companies for putting profit before safety – noting quick action is taken to remove content found to infringe copyright rules, but that the same prompt action is not taken when the material involves hateful or illegal content. The Committee recommends that the same expertise and technology should be applied for illegal and abusive content.”

Sum up of report findings:

• Government should consult on stronger law and system of fines for companies that fail to remove illegal content
• Social media companies that fail to proactively search for and remove illegal material should pay towards costs of the police doing so instead
• Social media companies should publish regular reports on their safeguarding activity including the number of staff, complaints and action taken

The above does not represent policy but is a weekly report of parliamentary activity prepared by the Alliance on IP matters and other broad areas of interest to the creative industries which the Alliance has shared with its members