Intellectual Property (Unjustified Threats) Bill (HC Bill 113)

Intellectual Property (Unjustified Threats) BillPage 10

(2) A threat of infringement proceedings is not actionable if the
infringement is alleged to consist of—

(a) making a product for disposal, or

(b) importing a product for disposal.

(3) 5A threat of infringement proceedings is not actionable if the
infringement is alleged to consist of an act which, if done, would
constitute an infringement of a kind mentioned in subsection (2)(a) or
(b).

(4) A threat of infringement proceedings is not actionable if the threat—

(a) 10is made to a person who has done, or intends to do, an act
mentioned in subsection (2)(a) or (b) in relation to a product,
and

(b) is a threat of proceedings for an infringement alleged to consist
of doing anything else in relation to that product.

(5) 15A threat of infringement proceedings which is not an express threat is
not actionable if it is contained in a permitted communication.

(6) In sections 26C and 26D an “actionable threat” means a threat of
infringement proceedings that is actionable in accordance with this
section.

26B 20Permitted communications

(1) For the purposes of section 26A(5), a communication containing a
threat of infringement proceedings is a “permitted communication”
if—

(a) the communication, so far as it contains information that relates
25to the threat, is made for a permitted purpose;

(b) all of the information that relates to the threat is information
that—

(i) is necessary for that purpose (see subsection (5)(a) to (c)
for some examples of necessary information), and

(ii) 30the person making the communication reasonably
believes is true.

(2) Each of the following is a “permitted purpose”—

(a) giving notice that a registered design exists;

(b) discovering whether, or by whom, the right in a registered
35design has been infringed by an act mentioned in section
26A(2)(a) or (b);

(c) giving notice that a person has a right in or under a registered
design, where another person’s awareness of the right is
relevant to any proceedings that may be brought in respect of
40the registered design.

(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.

(4) But the following may not be treated as a “permitted purpose”—

(a) 45requesting a person to cease doing, for commercial purposes,
anything in relation to a product in which a design is
incorporated or to which it is applied,

Intellectual Property (Unjustified Threats) BillPage 11

(b) requesting a person to deliver up or destroy a product in which
a design is incorporated or to which it is applied, or

(c) requesting a person to give an undertaking relating to a product
in which a design is incorporated or to which it is applied.

(5) 5If any of the following information is included in a communication
made for a permitted purpose, it is information that is “necessary for
that purpose” (see subsection (1)(b)(i))—

(a) a statement that a right in a registered design exists and is in
force or that an application for registration of a design has been
10made;

(b) details of the registered design, or of a right in or under the right
in the registered design, which—

(i) are accurate in all material respects, and

(ii) are not misleading in any material respect; and

(c) 15information enabling the identification of the products in which
the registered design is allegedly incorporated or to which the
registered design is allegedly applied.

26C Remedies and defences

(1) Proceedings in respect of an actionable threat may be brought against
20the person who made the threat for—

(a) a declaration that the threat is unjustified;

(b) an injunction against the continuance of the threat;

(c) damages in respect of any loss sustained by the aggrieved
person by reason of the threat.

(2) 25It is a defence for the person who made the threat to show that the act
in respect of which proceedings were threatened constitutes (or if done
would constitute) an infringement of the right in the registered design.

(3) It is a defence for the person who made the threat to show—

(a) that, despite having taken reasonable steps, the person has not
30identified anyone who has done an act mentioned in section
26A(2)(a) or (b) in relation to the product which is the subject of
the threat, and

(b) that the person notified the recipient, before or at the time of
making the threat, of the steps taken.

26D 35Professional advisers

(1) Proceedings in respect of an actionable threat may not be brought
against a professional adviser (or any person vicariously liable for the
actions of that professional adviser) if the conditions in subsection (3)
are met.

(2) 40In this section “professional adviser” means a person who, in relation
to the making of the communication containing the threat—

(a) is acting in a professional capacity in providing legal services or
the services of a trade mark attorney or a patent attorney, and

(b) is regulated in the provision of legal services, or the services of
45a trade mark attorney or a patent attorney, by one or more
regulatory bodies (whether through membership of a
regulatory body, the issue of a licence to practise or any other
means).

Intellectual Property (Unjustified Threats) BillPage 12

(3) The conditions are that—

(a) in making the communication the professional adviser is acting
on the instructions of another person, and

(b) when the communication is made the professional adviser
5identifies the person on whose instructions the adviser is acting.

(4) This section does not affect any liability of the person on whose
instructions the professional adviser is acting.

(5) It is for a person asserting that subsection (1) applies to prove (if
required) that at the material time—

(a) 10the person concerned was acting as a professional adviser, and

(b) the conditions in subsection (3) were met.

26E Supplementary: pending registration

(1) In sections 26 and 26B references to a registered design include
references to a design in respect of which an application for registration
15has been made under section 3.

(2) Where the threat of infringement proceedings is made after an
application for registration has been made (but before registration) the
reference in section 26C(2) to “the registered design” is to be treated as
a reference to the design registered in pursuance of that application.

26F 20Supplementary: proceedings for delivery up etc.

In section 26(1)(b) the reference to proceedings for infringement of the
right in a registered design includes a reference to—

(a) proceedings for an order under section 24C (order for delivery
up), and

(b) 25proceedings for an order under section 24D (order as to disposal
of infringing articles).”

(4) Before section 27 insert—

(5) In section 45 (application to Scotland) after subsection (1) insert—

(1A) In the application of section 26C(1)(a) (remedy for unjustified threat of
30infringement proceedings) to Scotland, “declaration” means
“declarator”.”

5 Design right

(1) Part 3 of the Copyright, Designs and Patents Act 1988 (design right) is
amended as follows.

(2) 35For section 253 (remedy for unjustified threats of infringement proceedings),

Intellectual Property (Unjustified Threats) BillPage 13

and the heading immediately before that section, substitute—

“Unjustified threats

253 Threats of infringement proceedings

(1) A communication contains a “threat of infringement proceedings” if a
5reasonable person in the position of a recipient would understand from
the communication that—

(a) design right subsists in a design, and

(b) a person intends to bring proceedings (whether in a court in the
United Kingdom or elsewhere) against another person for
10infringement of the design right by—

(i) an act done in the United Kingdom, or

(ii) an act which, if done, would be done in the United
Kingdom.

(2) References in this section and in section 253C to a “recipient” include,
15in the case of a communication directed to the public or a section of the
public, references to a person to whom the communication is directed.

253A Actionable threats

(1) Subject to subsections (2) to (5), a threat of infringement proceedings
made by any person is actionable by any person aggrieved by the
20threat.

(2) A threat of infringement proceedings is not actionable if the
infringement is alleged to consist of—

(a) making an article for disposal, or

(b) importing an article for disposal.

(3) 25A threat of infringement proceedings is not actionable if the
infringement is alleged to consist of an act which, if done, would
constitute an infringement of a kind mentioned in subsection (2)(a) or
(b).

(4) A threat of infringement proceedings is not actionable if the threat—

(a) 30is made to a person who has done, or intends to do, an act
mentioned in subsection (2)(a) or (b) in relation to an article, and

(b) is a threat of proceedings for an infringement alleged to consist
of doing anything else in relation to that article.

(5) A threat of infringement proceedings which is not an express threat is
35not actionable if it is contained in a permitted communication.

(6) In sections 253C and 253D an “actionable threat” means a threat of
infringement proceedings that is actionable in accordance with this
section.

253B Permitted communications

(1) 40For the purposes of section 253A(5), a communication containing a
threat of infringement proceedings is a “permitted communication”
if—

(a) the communication, so far as it contains information that relates
to the threat, is made for a permitted purpose;

Intellectual Property (Unjustified Threats) BillPage 14

(b) all of the information that relates to the threat is information
that—

(i) is necessary for that purpose (see subsection (5)(a) to (c)
for some examples of necessary information), and

(ii) 5the person making the communication reasonably
believes is true.

(2) Each of the following is a “permitted purpose”—

(a) giving notice that design right subsists in a design;

(b) discovering whether, or by whom, design right in a design has
10been infringed by an act mentioned in section 253A(2)(a) or (b);

(c) giving notice that a person has a right in or under the design
right in a design, where another person’s awareness of the right
is relevant to any proceedings that may be brought in respect of
the design right in the design.

(3) 15The 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.

(4) But the following may not be treated as a “permitted purpose”—

(a) requesting a person to cease doing, for commercial purposes,
20anything in relation to an article made to a design,

(b) requesting a person to deliver up or destroy an article made to
a design, or

(c) requesting a person to give an undertaking relating to an article
made to a design.

(5) 25If any of the following information is included in a communication
made for a permitted purpose, it is information that is “necessary for
that purpose” (see subsection (1)(b)(i))—

(a) a statement that design right subsists in a design;

(b) details of the design, or of a right in or under the design right in
30the design, which—

(i) are accurate in all material respects, and

(ii) are not misleading in any material respect; and

(c) information enabling the identification of articles that are
alleged to be infringing articles in relation to the design.

253C 35Remedies and defences

(1) Proceedings in respect of an actionable threat may be brought against
the person who made the threat for—

(a) a declaration that the threat is unjustified;

(b) an injunction against the continuance of the threat;

(c) 40damages in respect of any loss sustained by the aggrieved
person by reason of the threat.

(2) It is a defence for the person who made the threat to show that the act
in respect of which proceedings were threatened constitutes (or if done
would constitute) an infringement of design right.

(3) 45It is a defence for the person who made the threat to show—

(a) that, despite having taken reasonable steps, the person has not
identified anyone who has done an act mentioned in section

Intellectual Property (Unjustified Threats) BillPage 15

253A(2)(a) or (b) in relation to the article which is the subject of
the threat, and

(b) that the person notified the recipient, before or at the time of
making the threat, of the steps taken.

253D 5Professional advisers

(1) Proceedings in respect of an actionable threat may not be brought
against a professional adviser (or any person vicariously liable for the
actions of that professional adviser) if the conditions in subsection (3)
are met.

(2) 10In this section “professional adviser” means a person who, in relation
to the making of the communication containing the threat—

(a) is acting in a professional capacity in providing legal services or
the services of a trade mark attorney or a patent attorney, and

(b) is regulated in the provision of legal services, or the services of
15a trade mark attorney or a patent attorney, by one or more
regulatory bodies (whether through membership of a
regulatory body, the issue of a licence to practise or any other
means).

(3) The conditions are that—

(a) 20in making the communication the professional adviser is acting
on the instructions of another person, and

(b) when the communication is made the professional adviser
identifies the person on whose instructions the adviser is acting.

(4) This section does not affect any liability of the person on whose
25instructions the professional adviser is acting.

(5) It is for a person asserting that subsection (1) applies to prove (if
required) that at the material time—

(a) the person concerned was acting as a professional adviser, and

(b) the conditions in subsection (3) were met.

253E 30Supplementary: proceedings for delivery up etc.

In section 253(1)(b) the reference to proceedings for infringement of
design right includes a reference to—

(a) proceedings for an order under section 230 (order for delivery
up), and

(b) 35proceedings for an order under section 231 (order as to disposal
of infringing articles).”

(3) Before section 254 insert—

(4) In section 262 (adaptation of expressions in relation to Scotland) at the
appropriate place insert—

  • 40““declaration” means “declarator”;”.

Intellectual Property (Unjustified Threats) BillPage 16

6 Community design

(1) The Community Design Regulations 2005 (S.I. 2005/2339S.I. 2005/2339) are amended as
follows.

(2) For regulation 2 (remedy for unjustified threats of infringement proceedings)
5substitute—

2 Unjustified threats: threats of infringement proceedings

(1) A communication contains a “threat of infringement proceedings” if a
reasonable person in the position of a recipient would understand from
the communication that—

(a) 10a Community design exists, and

(b) a person intends to bring proceedings (whether in a court in the
United Kingdom or elsewhere) against another person for
infringement of the Community design by—

(i) an act done in the United Kingdom, or

(ii) 15an act which, if done, would be done in the United
Kingdom.

(2) References in this regulation and in regulation 2C to a “recipient”
include, in the case of a communication directed to the public or a
section of the public, references to a person to whom the
20communication is directed.

2A Unjustified threats: actionable threats

(1) Subject to paragraphs (2) to (5), a threat of infringement proceedings
made by any person is actionable by any person aggrieved by the
threat.

(2) 25A threat of infringement proceedings is not actionable if the
infringement is alleged to consist of—

(a) making an article for disposal, or

(b) importing an article for disposal.

(3) A threat of infringement proceedings is not actionable if the
30infringement is alleged to consist of an act which, if done, would
constitute an infringement of a kind mentioned in paragraph (2)(a) or
(b).

(4) A threat of infringement proceedings is not actionable if the threat—

(a) is made to a person who has done, or intends to do, an act
35mentioned in paragraph (2)(a) or (b) in relation to an article, and

(b) is a threat of proceedings for an infringement alleged to consist
of doing anything else in relation to that article.

(5) A threat of infringement proceedings which is not an express threat is
not actionable if it is contained in a permitted communication.

(6) 40In regulations 2C and 2D an “actionable threat” means a threat of
infringement proceedings that is actionable in accordance with this
regulation.

Intellectual Property (Unjustified Threats) BillPage 17

2B Unjustified threats: permitted communications

(1) For the purposes of regulation 2A(5), a communication containing a
threat of infringement proceedings is a “permitted communication”
if—

(a) 5the communication, so far as it contains information that relates
to the threat, is made for a permitted purpose;

(b) all of the information that relates to the threat is information
that—

(i) is necessary for that purpose (see paragraph (5)(a) to (c)
10for some examples of necessary information), and

(ii) the person making the communication reasonably
believes is true.

(2) Each of the following is a “permitted purpose”—

(a) giving notice that a Community design exists;

(b) 15discovering whether, or by whom, a Community design has
been infringed by an act mentioned in regulation 2A(2)(a) or (b);

(c) giving notice that a person has a right in or under a Community
design, where another person’s awareness of the right is
relevant to any proceedings that may be brought in respect of
20the Community design.

(3) The court may, having regard to the nature of the purposes listed in
paragraph (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.

(4) But the following may not be treated as a “permitted purpose”—

(a) 25requesting a person to cease doing, for commercial purposes,
anything in relation to an article made to a design, in which a
design is incorporated or to which it is applied,

(b) requesting a person to deliver up or destroy an article made to
a design, in which a design is incorporated or to which it is
30applied, or

(c) requesting a person to give an undertaking relating to an article
made to a design, in which a design is incorporated or to which
it is applied.

(5) If any of the following information is included in a communication
35made for a permitted purpose, it is information that is “necessary for
that purpose” (see paragraph (1)(b)(i))—

(a) a statement—

(i) that a design is a registered Community design and the
registration is in force,

(ii) 40that an application for a registered Community design
has been made, or

(iii) that a design is protected as an unregistered
Community design;

(b) details of the Community design, or of a right in or under the
45Community design, which—

(i) are accurate in all material respects, and

(ii) are not misleading in any material respect; and

(c) information enabling the identification of the article that is
alleged to be infringing an article in relation to the design.

Intellectual Property (Unjustified Threats) BillPage 18

2C Unjustified threats: remedies and defences

(1) Proceedings in respect of an actionable threat may be brought against
the person who made the threat for—

(a) a declaration that the threat is unjustified;

(b) 5an injunction against the continuance of the threat;

(c) damages in respect of any loss sustained by the aggrieved
person by reason of the threat.

(2) It is a defence for the person who made the threat to show that the act
in respect of which proceedings were threatened constitutes (or if done
10would constitute) an infringement of the Community design.

(3) It is a defence for the person who made the threat to show—

(a) that, despite having taken reasonable steps, the person has not
identified anyone who has done an act mentioned in regulation
2A(2)(a) or (b) in relation to the article which is the subject of the
15threat, and

(b) that the person notified the recipient, before or at the time of
making the threat, of the steps taken.

2D Unjustified threats: professional advisers

(1) Proceedings in respect of an actionable threat may not be brought
20against a professional adviser (or any person vicariously liable for the
actions of that professional adviser) if the conditions in paragraph (3)
are met.

(2) In this section “professional adviser” means a person who, in relation
to the making of the communication containing the threat—

(a) 25is acting in a professional capacity in providing legal services or
the services of a trade mark attorney or a patent attorney, and

(b) is regulated in the provision of legal services, or the services of
a trade mark attorney or a patent attorney, by one or more
regulatory bodies (whether through membership of a
30regulatory body, the issue of a licence to practise or any other
means).

(3) The conditions are that—

(a) in making the communication the professional adviser is acting
on the instructions of another person, and

(b) 35when the communication is made the professional adviser
identifies the person on whose instructions the adviser is acting.

(4) This section does not affect any liability of the person on whose
instructions the professional adviser is acting.

(5) It is for a person asserting that paragraph (1) applies to prove (if
40required) that at the material time—

(a) the person concerned was acting as a professional adviser, and

(b) the conditions in paragraph (3) were met.

2E Unjustified threats: supplementary: pending registration

(1) In the application of regulations 2 and 2B in relation to a registered
45Community design, references to a Community design include
references to a Community design in respect of which an application

Intellectual Property (Unjustified Threats) BillPage 19

for registration has been filed in accordance with Article 35 of the
Community Design Regulation.

(2) Where the threat of infringement proceedings is made after an
application for registration has been filed (but before registration) the
5reference in regulation 2C(2) to “the Community design” is to be
treated as a reference to the design registered in pursuance of that
application.

2F Unjustified threats: supplementary: proceedings for delivery up etc.

In regulation 2(1)(b) the reference to proceedings for infringement of
10the Community design includes a reference to—

(a) proceedings for an order under regulation 1B (order for
delivery up), and

(b) proceedings for an order under regulation 1C (order as to
disposal of infringing articles).”

(3) 15In regulation 5A(1) (application to Scotland) at the appropriate place insert—

  • ““declaration” means “declarator”;”.

Final provisions

7 Extent

(1) This Act extends to England and Wales, Scotland and Northern Ireland.

(2) 20The following provisions also extend to the Isle of Man, subject to such
modifications as Her Majesty may by Order in Council provide—

(a) section 1(1), (2) and (4) to (7);

(b) section 2;

(c) section 4;

(d) 25this subsection;

(e) section 8 (so far as relating to the commencement of provisions which
extend to the Isle of Man);

(f) section 9.

(3) Her Majesty may by Order in Council provide for the amendments made by
30section 1(3) and (8) of this Act to the Patents Act 1977 to extend, with or without
modifications, to the Isle of Man.

(4) The power to make an Order in Council under section 255(2) of the Copyright,
Designs and Patents Act 1988 (extension of certain provisions to the Isle of
Man, the Channel Islands or other territories, with or without modifications)
35may be exercised in relation to any amendment made by section 5 above (and
in section 255(4) and (5) of that Act the references to Part 3 include references
to the provisions substituted or inserted by the amendments made by section
5).

8 Commencement

(1) 40This section, section 7(1) to (3) and section 9 come into force on the day on
which this Act is passed.