Protecting Your IP and Yourself

August 2018

Intellectual property comes in many forms – both as specific rights such as copyright, patents, and registered trade marks, and in the shape of common law, such as the tort of passing off.

Whatever form your IP takes, protecting it is crucial and taking swift and decisive action upon discovering infringement is an important first step. This is where cease and desist letters (also known as “letters of claim” or “letters before action”) come in.

A cease and desist letter serves as a first step that puts an infringer on notice that their activities are known and – ideally – seeks to resolve the matter without recourse to costly and time-consuming legal action.

Threats Actions

As useful as cease and desist letters are, they should not be taken lightly. In the case of some IP rights, namely patents, registered trade marks, and designs, threats actions are available as a remedy to protect businesses and individuals against the misuse of threats of IP infringement actions which are made for purposes of intimidation or gaining an unfair commercial advantage when there has in fact been no infringement.

That being said, the law does not seek to protect those who are guilty of infringement, nor does it seek to restrict those whose IP rights actually have been infringed.

The Intellectual Property (Unjustified Threats) Act 2017 sought to strike a balance which allowed rights holders to protect their IP, while still preventing abuse of the system in order to distort competition or stifle innovation.

An action for unjustified threats is not available where the threat in question relates to an allegedly infringing primary act. A ‘primary act’ is, in essence, the top-tier of IP infringement such as making a patented product, using a patented process, using a trade mark for goods or service, or making a product from a design. Those carrying out such acts will be ‘primary actors’ and, in general terms, these malcontents are fair game whether they are actually carrying out the primary acts or whether they merely intend to. Moreover, if a primary actor is also carrying out related secondary acts (see below), they cannot bring an action for threats made against them that refer to those secondary acts.

Less straightforward are ‘secondary actors’. While a primary actor is one that is directly infringing (or intending to infringe) your IP, thus meaning that their culpability is quite clear, a secondary actor’s hands may not be quite so dirty. A secondary actor may be, for example, a retailer selling products made by a primary actor. Consequently, the law is more protective. There are still circumstances under which it is permissible to contact secondary actors; however, these are much more restrictive and limited to ‘permitted purposes’ such as simply making someone aware that your IP right exists, and seeking to discover who the primary infringer is.

Reviewed and Updated Letter Templates

Our portfolio of IP cease and desist letters has now been reviewed in light of the 2017 Act and current best practice to ensure ongoing compatibility with the law. Where the letters relate to IP rights in respect to which a threats action can be brought, we have retained our original approach of offering two choices – one not accusing and simply seeking discussion, the second accusing and demanding that the recipient “ceases and desists”. Despite the clarifications in the 2017 Act, we recognise that some may still prefer to discuss and ideally resolve disputes with informal discussions without recourse to formal accusations and threats of legal action.

Other improvements to our letters include:

  • More detailed information about the IP in question including the date of registration (where applicable), whether the complaining party is the original owner and, if they are not, when the IP was assigned to them.
  • Prompts for more details regarding the discovery of the alleged infringement, in particular the date it was discovered.
  • In many cases, additional undertakings required of the alleged infringer.

The contents of this Newsletter are for reference purposes only and do not constitute legal advice. Independent legal advice should be sought in relation to any specific legal matter.

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