UK: New "Unjustified Threats" Legislation

The Intellectual Property (Unjustified Threats) Act 2017

The new Act on "unjustified threats" came into force in the United Kingdom on October 1, 2017 following a long vetting process and much public commentary by European practitioners. The concept of a remedy for "unjustified threats" in intellectual property matters in the U.K. goes back many years and well prior to the current legislation and its predecessor embodied in Section 21 of the Trademarks Act of 1994. The prior legislation was deemed inconsistent and confusing as to exactly what constituted an "unjustified threat" communication. Basically, the legislation provides a remedy to a party receiving the threat of an infringement proceeding based on a registered trademark claim where the threat is unjustified, and provides remedies to the threatened party in the form of a declaration of non-infringement, an injunction against further threats, and an award of damages. The basic purpose of the legislation is to provide a protective measure against unjustified threats made against a retailer or distributor or other business that does not make or import the allegedly infringing goods since this could damage or destroy the legitimate business of innocent traders who are not responsible for the manufacture or importation of the goods. Unjustified threats provisions are also found in separate U.K. legislation on patents, designs, and copyright (although the provisions have not been consistent with each other up to now). Further the unjustified threats legislation applicable to trademarks does not include any claims based on unregistered trademark rights (known as "passing off" in the U.K.).

The new Act covers all registered trademark rights extending to the U.K. (whether U.K. or EU or international registrations designating the U.K. or the EU) and therefore provides a more uniform regime. The definition of a threat has also been broadened to include a threat to bring action outside of the U.K. for an act done or to be done in the U.K., as for example where the right relied on is an EU trademark registration and the threat is of a proceeding in a different EU member state court. The new Act maintains the two-fold test of the prior legislation as to whether a communication (which can be written or oral or otherwise) contains a "threat of infringement proceedings" from which a "reasonable person" will understand that some claim of an intellectual property right was being made against them and that the person sending the message intends to file infringement proceedings in respect of the relevant rights via legal action in the U.K. Notification of the existence of a registered trademark is not considered an actionable threat and therefore writing to a retailer or secondary party selling the goods to inform them of the existence of a registered trademark right and inquiring as to the source of the goods so that action can be taken against the manufacturer or importer (i.e. the primary parties) would not constitute an actionable threat.

The Act also provides a new "safe harbor" for an IP rights holder communicating with a possibly infringing party without incurring liability for an unjustified threat by way of a "permitted communication." Such a communication is two-fold in nature, namely, (i) for a permitted purpose (such as noting the existence of an IP right) and (ii) limited only to the scope of the threat necessary for the immediate purpose and provided that the person making the claim believes all the information to be true.

Defenses under the Act are also available where the threat was justified because there was in fact an infringement and the threat was sent to a secondary party because the primary party could not be found and the rights holder had taken reasonable steps to first try and identify the primary party.

There is also a new provision protecting professional advisors against an unjustified threat claim provided they are acting on the instructions of their client (who should be specifically identified in the communication). Previously, the recipient of an unjustified threat could sue not only the party claiming the intellectual property right but also their professional counsel or attorney making the claim, and this had the unfortunate result of encouraging a litigation strategy of "sue first and talk later" in order to avoid a threats claim against the professional advisor which could then drive a wedge between the advisor and their client.

Although the new Act is apparently being welcomed by many U.K. practitioners for providing some clarification and consistency with respect to unjustified threats litigation, it has not been met with universal praise by practitioners in other European jurisdictions, some of whom view the legislation as unnecessarily complicated or cumbersome.

Unjustified threats provisions are limited in the European Community to the United Kingdom and Ireland, but they also extend to other countries with a similar British law tradition including Australia, which has protective measures against unjustified threats (known locally as "groundless threats") in their legislation on trademarks, patents, and copyrights. There is draft legislation pending in Australia that will harmonize the different types of intellectual property in this area. The current Australian provisions seem to be clearer and simpler in some respects. For example, under the Australian legislation, the "safe harbor" provision for professional advisors simply states:

"This section does not make a lawyer, registered trade marks attorney or patent attorney liable to an action for an act done in a professional capacity on behalf of a client."

In contrast, the equivalent U.K. provision includes five sub-sections dealing with who may be considered a professional advisor and their capacities which seems unnecessarily complicated.

Prior to the enactment of the new U.K. legislation, the best professional advice was to always seek the opinion of local counsel in the U.K. before sending out a cease and desist or infringement claim letter. In spite of the improvements reflected in the new Act, this is still the best advice. In the past, U.S. and other foreign counsel have in some cases sent out demand letters to local parties in the U.K., only to be faced with a counter attack under the local unjustified threats legislation, resulting in not only an injunction and declaration of non-infringement, but also a substantial award of damages in favor of the threatened party where the infringement claim was overly broad and not justified.

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