You know that your IP rights are valuable
business assets, so you’ve registered your trade marks, lodged your
community design registrations and filed your patents.
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Now you think your rights have been infringed. You immediately fire
off an angry letter threatening Court proceedings and that major
damages will be payable in your direction for what they have done.
Big mistake! - as
Tony Catterall, leading IP Specialist and Senior Partner at
The Patents Act, the Trade Marks Act and the Community Design
Regulations all provide that an aggrieved person (not just the
recipient of your letter) can bring an action against you for
“threats of infringement”. This law is to prevent the use of IP
rights as a commercial weapon against your rivals’ customers.
Don’t think either that you can get around this problem by marking
your letter “without prejudice”. The Court will only protect such
communications if they are made in genuine settlement negotiations –
hardly likely in those circumstances.
So, instead of being the aggressor taking the initiative, you’ll
find yourself on the receiving end of a damages action and
injunction proceedings. If you have sent letters to your rival’s
customers and they’ve stopped orders on the strength of your letter,
then you could be on the receiving end of a substantial claim.
There are only two defences to what is known as a “threats action”.
Either justification (ie. it’s now up to you to prove that the
person you have threatened was in fact infringing your rights (not
always that easy!); or you threatened someone making the infringing
product or importing the product, not one of their customers or
So what action should you take when you learn of an infringement of
your IP rights (other than calling Taylors IP Team)? If you must
rush into print, the only safe course is to send a “mere
notification” letter advising of the existence of your IP rights but
Please note that you’re back in trouble if you add anything to the
notification such as a statement that “your rights will be
enforced”, so be polite and don’t make any threats.