By Alex Athans, Legal Team
Several acts of the British Parliament hold that intellectual property complaints may be “unjustified threats,” entitling the defendant in an infringement case to bring an action for damages against the plaintiff for any losses suffered as a consequence of the threat of litigation.
Section 70 of the Patents Act 1977 provides that an allegation of infringement is unjustified unless the one making the threat can prove at trial that their intellectual property right is actually being infringed. The recent case of LB Europe Limited provides an example of Section 70 in action. Smurfit Bag In A Box threatened a customer of LB Europe with a lawsuit: if the customer sold LB Europe’s dispensing tap, Smurfit would sue the customer for patent infringement.
LB Europe learned of this threat and initiated a lawsuit against Smurfit for “unjustified threats” per Section 70. The court found that Smurfit’s threats were unjustified because the patent was not infringed by LB Europe’s product. Since LB Europe’s customer had refused to buy the dispensing tap from LB Europe until the court found that LB Europe’s product did not infringe Smurfit’s patent, LB Europe was entitled to recover damages from Smurfit for losses incurred due to these lost sales.
Domainers conducting business in or with the United Kingdom should be aware of this British intellectual property law, in case they are accused of infringing a trademark. If an unjustified threat has been made, then the domainer may be able to recover from the party making the allegation. Trademark owners afraid that their trademark is being infringed by a domainer should take caution and be fully advised of the risks involved and the probability that their trademark is indeed being infringed before taking legal action, lest they may find themselves liable.
Source: Sedo.com -- Reprinted with permission -- August 12, 2008
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