Beware Elephant Traps! – How to Defend Your IP Without Coming Unstuck

One of the major pitfalls for the unwary in disputes about IP is what is known by IP specialists as the so called “threats provisions.” These statutory provisions are currently unique to disputes about trade marks, patents and designs.

They regularly ensnare the unwary when it comes to firing off letters to people or businesses who appear to be infringing those rights. We also see other solicitors, trade mark and patent attorneys fall into the “threat provisions” elephant trap.  An understanding of threats is one of the distinguishing features between those who know the law about IP disputes and those who guess at it.

If you fall foul of the elephant trap and send a letter containing threats of infringement proceedings, which later proves to be baseless, YOU could be the one who ends up being sued and paying hefty damages! The consequences could not be greater as your business could be put at risk.

The usual traps that arise are where:

  1. There is no infringement. So where, for example, a trade mark isn’t infringed because the mark being compared against it is being used on totally different goods and services.

  1. The trade mark, patent or design right complained about isn’t valid or could be cancelled. For example, this may arise where a trade mark hasn’t been used in the first 5 years of being registered, or your patent has expired and could be expunged from the register.

The law currently in force is however confusing and inconsistent and is being reformed soon. By way of example, merely informing someone of a registered right can be deemed to be an unjustified threat if the recipient reasonably considers the sloppy wording to amount to a threat. There are also confusing exception provisions in relation to whether or not you can justifiably write to sellers and distributors as well as manufacturers and importers.

When the changes come, it will be far easier to merely inform someone else of your registered rights without falling foul of the threats provisions. Having said that however, it always pays to get it right first time by asking an expert. One of the downsides of not complaining is losing the right to complain at all in the future and seeing your valuable profits disappear.

We’re happy to discuss this and other IP issues with you – we do not charge for our initial phone call of advice.If you think you’re losing money, then do give us a call on 0844 800 8871.

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