Patents, Trade Marks and Design Rights: Groundless Threats, a Consultation PaperInfringement litigation can be disruptive and expensive. The mere threat that a product infringes patent, trade mark or design rights may cause significant commercial damage to a business. But the law provides protection to businesses if that threat is groundless. The groundless threat provisions were introduced in the nineteenth century to resolve disputes about steam engines. The Commission believes that they need to be adapted to the new global battles over information technology and is consulting on how they can be brought up to date. The Commission is consulting on two approaches to reform. The first is to build on the reforms made to patent law in 2004 and to extend these to the other rights. The Commission also proposes that legal advisers should be protected from liability for groundless threats. The second approach is to treat groundless threats as a form of unfair competition and to introduce a new and broader cause of action based on the Paris Convention. |
Contents
INTRODUCTION | 1 |
A threat 2 15 36 | 2 |
common elements | 33 |
A person aggrieved by the threat 2 36 | 41 |
patents the 2004 reforms | 47 |
The common law torts and other remedies | 55 |
European intellectual property rights | 66 |
Lessons from other jurisdictions | 78 |
Problems with the | 91 |
an evolutionary approach | 111 |
a wider approach? | 131 |
Assessing the impact of reform | 143 |
List of proposals and questions | 149 |
THE THREATS PROVISIONS | 155 |
Common terms and phrases
acts of infringement alleged infringer amended Apple Inc apply background paper bring proceedings Chapter Cipla claim claimant Community Design Regulation Community Patent Community registered design Community Trade Mark competitor consultees agree customers damage defendant Designs Act 1949 Designs and Patents disputes ETMR European Patent European Patent Convention EWCA Civ EWHC example exclusive exemption factual information groundless threats action groundless threats provisions infringement proceedings intellectual property rights interim injunction invention jurisdiction law of groundless letter liability litigation Marks Act 1994 marks and design notification OHIM parties Patent Convention Patents Act 1977 Patents County Court primary infringer protection Reckitt Benckiser reforms registered and unregistered Registered Designs Act registered trade mark remedies retailer rights holder Samsung Electronics Scots law secondary infringement statutory threat of proceedings threaten threats of infringement tort Trade Mark Directive Trade Mark Regulation Trade Marks Act unfair competition unregistered design rights