UK: DON’T YOU THREATEN ME!: Incurring Liability For Making Groundless IP Infringement Threats In The Light Of The Current Law Reform Consultation

Last Updated: 20 June 2013
Article by Jonathan Cornthwaite

For well over a century IP law has featured a special set of rules whereby liability can be incurred as a result of the issue of groundless threats of infringement. Their object is to dissuade rights-holders from scaring off traders by the use of sabre-rattling; and their effect can often be to turn the tables on IP bullies who, to their surprise, find that they are receiving a writ rather than issuing one. But are the rules working properly? The Law Commission, which is currently consulting on the subject, thinks not, and has therefore proposed a series of reforms. In this handout we briefly review the current rules, and then discuss elements of the consultation.

1.    The current law...


Intellectual property law is relatively complex, and litigation can be costly, so it is all too easy for people to capitulate when threatened with IP litigation – especially alleged "secondary infringers", namely downstream traders such as distributors, stockists, retailers, resellers and business customers who often find it difficult if not impossible to distinguish between a bluff and a genuine threat.  It is principally this category of people whom the laws on liability for groundless threats are designed to protect.

The cause of action for groundless threats

Under a series of comparable (though not identical) statutory provisions1a person aggrieved by a threat of proceedings for infringement of certain categories of IPRs (whether or not he is the actual recipient of them) may sue for relief in the form of an injunction, a declaration that the threat lacks justification, and damages2.  The categories of IPRs covered by this cause of action extend to UK and European patents; UK, European Community and International Trade Mark Registrations; registered and unregistered European Community Designs, and UK registered and unregistered designs – a long list, but not a comprehensive one, for various other categories of IP infringement3 fall outside the scope of the provisions.

Parties who are potentially liable

Since anyone issuing such a threat may potentially be liable, those at risk include not only IP rights holders themselves, but also their licensees and indeed their professional advisors, such as patent and trade mark attorneys, and solicitors.  It is also worth remembering that employers may incur liability under the threats provisions by virtue of vicarious liability for their employees, even if the latter have been expressly prohibited from uttering threats. 

Defences and exemptions

As well as those categories of IPRs falling outside the provisions4, various types of threat enjoy exemption from liability.  For example, a threat of patent infringement proceedings made against a manufacturer will not be actionable5; nor will a threat to sue someone for having applied a registered trade mark to goods or their packaging6.  And, obviously, a defendant who can show that his threats were justified will have not only a valid defence to the action, but also (presumably) a strong case to recover relief for infringement.  Care however needs to be taken to avoid a threat incurring liability under other torts like (for example) malicious falsehood, defamation, inducing breach of contract, or intentionally causing loss by unlawful means.


The intricate way in which the provisions are drafted prima facie gives scope for bypassing them.  A threat to sue in another jurisdiction (for example, for infringement of a Community trade mark) may well evade the provisions altogether.  And providing (for example) "factual information about the patent"7or "mere notification that a design is protected by design right"8appear to provide safeguards against liability.  But great care needs to be taken in exploiting such loopholes, for the courts are inclined to construe them very narrowly, as demonstrated by the following examples:-

  • a Community design registrant who notified particulars of his design to eBay pursuant to its VeRo system was held to have issued an actionable threat9;
  • a letter by a patentee's agents enquiring "why you are of the opinion that you need not take into consideration the patent of our client when marketing the product" was held to be a veiled threat and therefore actionable10; and
  • a letter by a firm of lawyers requesting an alleged trade mark infringer either to negotiate or to cease use of the mark in question within a set time-frame was held to be an actionable threat despite the fact that it contained an invitation to negotiate11.

2.    ...and the reform proposals

The Law Commission has been requested by the Department for Business, Innovation and Skills and the Intellectual Property Office to review the laws of groundless threats of IP infringement proceedings.  In accordance with that request it issued a Consultation Paper12on whether (and, if so, how) the laws should be reformed.


The Law Commission acknowledges that the rules serve a useful purpose, especially as IP law becomes more and more complex, and that there is no single alternative tort that could replace them.  It has also noted that the laws of certain other major jurisdictions all have some form of legal protection to businesses against groundless threats of IP litigation. 

However, although it therefore concludes that the rules should not be abolished, it takes the view that significant reform is necessary.  In some respects it regards the rules as too harsh on rights holders; in other respects, it considers that it is too easy for rights holders to sidestep them.  It criticises the rules as being too complex, and embodying too much variation between IP categories. And it deplores their tendency to "drive cases to court" by encouraging a "sue first, ask questions later" approach that is clearly contrary to public policy.  It has therefore tabled a range of proposals, on some of which we comment below.

A more level playing field?

Under the current rules, threats of patent infringement proceedings enjoy more defences and exemptions than threats of registered trade mark or design infringement – which seems somewhat paradoxical, given that patents are generally more complex than trade marks or designs.  The Commission proposes to create a more level playing field by (amongst other things) extending to trade marks and designs some of the exemptions enjoyed by patentees.  One of these proposals, for example, would mean (if implemented) that any threat of proceedings made to a person who has applied a trade mark to goods, or who has then imported them into the UK, would be exempt from liability.  The net result of these proposals, if they come to pass, would thus be on balance very good news for brand and design owners.

A new tort

The Commission has expressed concern about widely-publicised allegations of IP infringement that, whilst falling short of being "threats" and thus avoiding liability under the current rules, nevertheless inflict damage on business.  With a view to plugging this and other gaps, the Commission has canvassed the introduction of a new tort of making false or misleading allegations in the course of trade that relate to patents, trade marks or designs, and that tend to discredit the establishment, goods or activities of a competitor.  In contrast to the first proposal discussed above, the result of this suggestion (if implemented) would clearly be disadvantageous to IP rights owners. 

Excluding legal advisors from liability?

The fact that professional advisors may themselves incur liability under the rules13is viewed with some dismay by the Commission.  It considers that a "conflict-of-interest" wedge can thereby be driven between the client and advisor; that advisors may be prompted to seek indemnities from clients; and that advisors may indeed be reluctant to sign the actual letter of claim themselves.  It therefore recommends that (as, for example in Australia) professional advisors be given the benefit of an exemption from the rules.


Whether or not all or any of the reforms canvassed by the Law Commission ever see the light of day, the principle whereby groundless threats of IP infringement can incur civil liability is set to remain a permanent feature of the legal landscape.  The watchword for those planning to issue such threats should therefore continue to be "look before you leap"!

This document is for general information only and does not seek to give legal advice or to be an exhaustive statement of the law. Specific advice should always be sought for individual cases.


1.Patents Act 1977, sections 70 and 77; Trade Marks Act 1994, sections 21, 52 and 54; Community Trade Mark Regulations 2006, regulation 6; Trade Marks (International Registration) Order 2008, Article 4; Registered Designs Act 1949, section 26; Copyright, Designs and Patents Act 1988, section 253; and Community Design Regulations 2005, regulation 2.

2.though, rather strangely, there have been few if any reported cases where damages have been recovered.

3.for example, copyright infringement, database right infringement, breach of confidence and passing off

4.see footnote 3 above

5.Patents Act 1977, section 70(4)(b)

6.Trade Marks Act 1994, section 21(1)(a)

7.Patents Act, section 70(5)(a)

8.Copyright, Designs and Patents Act 1988, section 253(4)

9.Quads 4 Kids v Campbell [2006] EWHC 2482(CH)

10.Zeno Corporation v BSM-Bionic Solutions [2009] EWHC 1829(Pat)

11.Best Buy Co Inc et al v Worldwide Sales Corporation España Sl  [2011] EWCA Civ 618.

12.CP 212 17 April 2013; the deadline for responding to the consultation is 17 July 2013.

13.see Brain v Ingledew Bennison [1995] FSR 552, et seq

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions