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Intellectual Property News

Nick Rose


United Kingdom

An update on two Intellectual Property Infringement matters; penalties for online infringement increase and law of unjustified threats of trademark, patent or design right infringement needs reform.

Increased Penalties for Online Infringement

Last year, the Intellectual Property Office (IPO) produced a report, "Penalties Fair?" which concluded that the maximum penalty for online copyright infringement should be increased to ten years of imprisonment, in order to match the maximum penalty accorded to offline infringement. At present, the offence of online copyright infringement under section 107(2A) and 198(1A) of the Copyright, Design and Patents Act 1988 is punishable by a maximum of two years' imprisonment. By contrast, the maximum custodial sentence for infringement in respect of physical goods is ten years.

On 12 January 2016, the UK government published a consultation in response to the IPO proposal.  This included a range of responses from businesses, individuals and the Open Rights Group. 71% of responding businesses supported the increase in the penalty, reinforcing Intellectual Property Minister, Baroness Neville- Rolfe's opinion that "[online copyright infringement] hurts businesses, consumers and the wider economy. Our creative industries are worth more than £7 billion to the UK economy and it is important to protect them from online criminal enterprises". Businesses have the view that the increased penalty will deter criminals from making money from a criminal offence.

In contrast, the Open Rights Group opposed the increase in sentence; they proposed that the way to solve online copyright infringement, such as piracy, would be to offer affordable, flexible ways to consume music and film; not harsher sentencing.

Following the consultation responses, the government has announced that it is “carefully considering the best way forward". 

Unjustified threats of IP infringement

Current legal provisions do not adequately provide redress to recipients of unjustified threats of trademark, patent or design right infringement. Since last year, the need to reform the law of unjustified threats has been widely discussed by both the Law Commission and Government. The Government's original proposals and the draft bill can be accessed through our SnIPpets Blog here and here.

On 28 January 2016, things edged one step closer when the Government published its response to the Law Commission's final report.  The response was largely positive and the government committed to the reforms to clarify the law of unjustified threats. In summary, the reforms propose to:

  • Bring the law for trademarks and designs into line with that for patents by allowing a rights holder to challenge someone who is a primary actor without fear of facing a groundless threats action.
  • Provide a clearer framework within which disputing parties and their professional advisers can operate to resolve disputes with a view to avoiding litigation.
  • Protect retailers, suppliers and customers against unjustified threats.
  • Protect professional advisers from facing personal legal action for making threats when they act for their clients.
  • Make necessary changes to threats law so that the protection against unjustified threats can apply to European patents that will come within the jurisdiction of the Unified Patent Court.

The government now intends to introduce primary legislation to implement these reforms. To read more about the background on this, please read our SnIPpets Blog:

Government response to proposed law update on unjustified threats of IP infringement

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