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Threats and trade marks – a uniquely British issue


2nd Aug 2013

The UK Trade Marks Act provides relief for an aggrieved person in the form of damages and an injunction against groundless threats of proceedings for infringement of a registered trade mark. This is something unique to the UK and must be borne in mind whenever a potential infringement is being considered.

Who Can Bring An Action For Groundless Threats?

Any “aggrieved person” can bring an action against a groundless threat. This is a very broad category and covers not only the person to whom the threats were directed but anyone who can show that “his commercial interests are or are likely to be adversely affected in a real as opposed to a fanciful way. Accordingly, a manufacturer of the goods in question will be an aggrieved person if the threats were sent to their customers. For example a threat of trade mark infringement proceedings sent to a supermarket chain will mean that the supermarket chain is an aggrieved person but so too is the manufacturer of the goods to which the threat relates.

What Is A Threat For The Purpose Of The Act?

In the case of L’Oreal (UK) Ltd and another v Johnson & Johnson and another [2000] F.S.R. 686, Justice Lightman expressed the test for whether a “threat” had been made as “whether the communication would be understood by an ordinary recipient in the claimant’s position as constituting a threat of infringement proceedings”. Furthermore, in Brain v Ingledew Brown Bennison & Garrett [1996] F.S.R. 341 at 349 Aldous L.J. stated:

…the conclusion as to whether a document amounts to a threat of patent proceedings is essentially one of fact. Thus a letter or a statement may on its face seem innocuous, but when placed in context it could be a threat of proceedings. The contrary is less likely but could happen.

It is not necessary that the threat is made in writing, an oral threat is sufficient. Furthermore, a threat does not have to be expressed, it may be implied from all the circumstances (see Bowden Controls Ltd v Acco Cable Controls Ltd).

Exclusions

There are some exceptions specified in section 21 for which relief from groundless threats cannot be sought. These are:

  1. The application of the mark to goods/packaging,
  2. The importation of goods/packaging to which the mark has been applied and
  3. The supply of services under the mark.

Threats By Legal Advisors

It is possible for legal advisors to be sued either as an individual or as a firm for making groundless threats even though they are acting on their clients instructions. This was confirmed in Reckitt Benckiser UK v Home Pairfum Ltd [2004] EWHC 302 where both Reckitt Benckiser and their legal advisor were sued for threats of design infringement.

Possible Approaches

Some will simply start infringement proceedings before writing to the other side to enter into negotiations. However, this will have cost implications, as it is at odds with the Civil Procedure Rules (CPR) in England and Wales which require disputing parties to communicate fully before considering litigation. As a learned judge has commented:

“There is then an obvious tension between the sensible “talk first” policy of the CPR and the “sue first” policy encouraged by the legislation”.

Others will try to draft carefully worded letters to ensure that no groundless threat claim can be made. However as stated in L’Oreal v Johnson and Johnson:

“where a person…sets out to write a clever letter designed to be close to the line between what is and what is not a threat or adverse claim, he should not be surprised if the Court holds that it is at least arguable that there is a threat or adverse claim”.

Accordingly, practitioners undertaking this practice may nonetheless find themselves on trial to determine the issue of whether a threat has been made.

Another loophole that may be used is threatening proceedings for infringement of a different right such as passing off, which is not covered by the threats provisions. If negotiations then break down the right holder can then still bring infringement proceedings on the basis on their registered trade marks.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

Author
Alice Findlay
Chairman
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