On 28 January 2016, the Government published its response to the Law Commission’s final report on reforming the law on unjustified threats of IP infringement. You can see our previous blogs on the Government’s original proposals and the draft Bill here and here. The Government solicited stakeholder views, which were generally positive, and these are addressed in the report.
The Government’s response has been positive. It has accepted the Law Commission’s recommendations for reform and intends to introduce primary legislation to implement the reforms during the next Parliamentary session, starting in April/May. It is hoped that it will be possible to introduce the reforms via the special procedure which exists for bills implementing uncontroversial Law Commission recommendations.
To recap, there are existing legal provisions which should provide redress to recipients of unjustified threats of trade mark, patent or design right infringement but the current regime is somewhat inconsistent and has been subject to criticism for the way in which has been applied.
The purpose of the new Bill is to address these deficiencies and inconsistencies to provide a fairer system for those potentially on the receiving end of such threat and for trade mark owners and their legal representatives. The key aims are to:
- Make trade mark and design law consistent with the provisions for patents by allowing challenge against a primary actor by an IP rights holder, without fear of facing a groundless threats action.
- Provide a clearer framework within which to settle disputes in order to avoid unnecessary litigation.
- Protect retailers, suppliers and customers against unjustified threats.
- Protect legal professionals from facing legal action for making threats when acting on behalf of clients.
- Update the law so protection against unjustified threats can apply to European patents that will come within the jurisdiction of the Unified Patent Court.
Watch this space for further updates.
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