It is vitally important you should not send a letter threatening action for infringing intellectual property (IP) without first seeking legal advice. You need to be aware that you can be sued for making a threat of proceedings for the infringement of IP in certain circumstances. This is generally when you have not got your facts straight, and as such, the threat is “unjustified”. Any person who suffers commercial damage as a result of an unjustified threat you make can sue you for that damage. So, for example, if you threaten a retailer for selling goods you wrongly believe are protected by your IP, and the retailer then stops selling the goods, their supplier may sue you for costing them business.
A threat to sue for IP infringement is unjustified if:
- no relevant IP right exists,
- the IP right has expired or is invalid, or
- no infringement has taken place because what they are doing is sufficiently different from what is protected by the IP right.
You must therefore be sure that the information you are giving is true. The following are examples of what you should avoid including in a letter without seeking legal advice first:
- an express threat for example “If you continue to sell product Y, I will sue you for IP infringement” or “I’ll see you in court”.
- a request that someone stops doing something (like manufacturing or selling a product).
- a request that someone destroys a product or other goods.
If you are sure the person you are contacting is infringing a valid IP right then you may say any of the things in the above list. However, you risk having to pay damages for making unjustified threats if they were not infringing or if the IP right is invalid. If someone makes a claim against you of this nature they could seek:
- a declaration that the threats lacked justification, and
- damages, and
- an injunction to prevent further threats.
In a recent case the Court of Appeal upheld the decision of the Patents Court that a complaint made to Amazon by the patent owner (NOCO) using Amazon's UK intellectual property (IP) rights complaints procedure (IPR procedure) in relation to products of the alleged infringer (Carku) was a threat of patent infringement.
Here the court stated that an explicit allegation of patent infringement, coupled with a request to remove (or stop selling) the product was, at the least, an implicit threat that if the request was not complied with, the matter would be pursued through the courts. In this case Amazon had delisted the relevant products as a result of the complaints, and whether they had taken that action because it perceived a threat to itself or to someone else did not alter the causative potency of the threat.