Intellectual property rights can be extremely valuable. They protect a proprietor's ideas, products, inventions, and for these reasons are extremely important commercially and their value is often jealously guarded. To protect their rights, a proprietor may take court action against a person or company who infringes their rights to court to prevent them from doing so.
Court actions of this kind are often expensive and burdensome. They involve specialist courts and judges. The litigation itself is often very complex, and frequently is very urgent. Knowing these problems with bringing a court action, there are some people who seek to take advantage of a proprietor's natural reluctance to go to court.
Despite having no intellectual property rights in a matter themselves, they may make a demand to the true proprietor and allege that they are breaching intellectual property rights, and threaten to take legal action to try and extort a financial settlement or the surrender of intellectual property rights to the extortioner. Being faced with the threat of a very complex and expensive court action, a proprietor may well prefer to give in to this form of 'blackmail' and surrender their legitimate rights rather than get involved in an expensive and time consuming battle in court.
To combat this problem, the law protects an innocent proprietor against so called 'unjustified' or 'ungrounded' threats from others.
The law in relation to certain intellectual property rights (Design Rights, Patents, Trade Marks and Registered Designs) has provision to protect a legitimate proprietor in respect of unjustified threats. A person who receives such a threat has the right to make an application to the court to grant an injunction to prevent the threat from being made, unless the defendant can prove that their intellectual property rights were or would have been infringed.
In order to protect the legitimate interests of a proprietor, however, there are a number of activities which are considered so serious that the unjustified threats action is not available for them. These exceptions protect a legal proprietor's right to defend their rights with. A proprietor can therefore safely make legal threats in respect of:
- where a Patent is alleged to have been infringed, the importing of a product for use in breach of the Patent;
- where a Trade Mark is alleged to have been infringed, where the alleged infringer has applied the mark to their goods or packaging, and where they have imported goods and provided services under the mark;
- where a Design Right is alleged to have been infringed, where the alleged infringer has or is making or importing anything in relation to the Design Right.
Factors to consider
Always take professional advice should be if you are faced with an allegation of infringement of intellectual property rights. Deciding to concede to the threat in light of the associated risks could be a costly decision where the purported proprietor in fact has no rights whatsoever.
Conversely, if you are a proprietor of intellectual property rights and wish to take action against someone whom you believe is genuinely infringing your intellectual property rights, you should always take professional advice to ensure that they do not expose themselves to a claim for making unjustified or ungrounded threats as outlined above.
At Clapham & Collinge, consultant solicitor Michael Olmer is able to advise you in situations of this kind and provide you with information, support, and legal advice. For more information, please contact our Norwich branch on 01603 693500, email us using 'Make an enquiry' form, or during offices hours use the 'live chat' facility.