Hooray! IP threats provisions to be reviewed by Law Commission

We commented in an earlier posting about the “unjustified threats” provisions in UK IP legislation, which we think should be abolished at the earliest opportunity.  The Law Society of England and Wales has campaigned for their abolition since 2006, but our impression has been that there was no appetite within Government, the judiciary or the IPO to change the current system.

It is very welcome news, therefore, to read the English Law Commission’s 11th Programme of Law Reform, which has recently been presented to Parliament.  The Law Commission’s confirmed projects for the coming period include a review of the unjustified threats provisions of UK trade mark and design law as well as a look at how the revised threats provisions of UK patent law are working.  The Law Commission intends to issue a consultation paper in 2012 and issue a final report in the Spring of 2014.

Paragraphs 2.78 to 2.80 of the 11th Programme explain the background:

2.78 It is important for the law to provide a balance between those who seek to protect their intellectual property rights and those who receive unjustified threats of intellectual property litigation. To this end, the law currently seeks to protect traders against some unjustified threats of trade mark or design litigation, especially where threats are made to third parties who may decide not to stock a product rather than become embroiled in expensive litigation. However, these protections have become problematic. The relevant statutory provisions use a wide concept of a “threat”. It is difficult to discuss whether an IP right has been violated without that being deemed a tacit threat. This serves to encourage litigation, in contrast to the culture promoted by the Civil Procedure Rules, which seek to promote settlement and frank pre-action conduct between parties.

2.79 Moreover, not only are rights holders themselves potentially liable, their legal advisors and employees too are liable for making threats. In the case of legal advisers, the rules create an unhelpful ethical dilemma that may impede their ability to give effective advice to their clients.

2.80 This project will consider whether to repeal, reform, or extend four provisions that impose liability to pay damages on the makers of an unjustified threat of certain types of intellectual property (IP) litigation. […]

Nemo me impune lacessit - a traditional Scottish approach to threats

IP Draughts wishes the Law Commission well with this project and hopes that it will result in a repeal of the threats provisions.