Beware the trademark bully boys
Nov 4 2008 by Will Sander for The Journal
A THREAT to sue for trade mark infringement can cause harm to the reputation of a business or intimidate potential customers. Section 21 of the Trade Mark Act 1994 (TMA) was introduced to protect third parties against threats based on unjustifiable allegations of trade mark infringement.
However, due to the broad drafting of the legislation and the severe consequences for the trade mark owner, it is generally thought that section 21 is used as a weapon by trade mark infringers to intimidate potential litigants.
In order for a claim to be made under section 21 the following conditions need to be fulfilled:
A threat must have been made.
The person threatened must be a “person aggrieved” (ie any person affected by the threat).
The threat is unjustified.
The first two conditions need to be proved by the infringer, leaving the trade mark owner to prove that section 21 does not apply because the threat was justified.
What amounts to a “threat” is a question of fact. A threat can either be expressed or implied, written or oral.
The main criteria that needs to be fulfilled is that an ordinary person (the position of the threatened person), would understand that the statement was a threat of proceedings for infringement of a UK registered trade mark.
But there are exceptions. Under section 21(1) you cannot bring a claim in the following circumstances:
Applying a trade mark to goods or packaging.
Importing goods that have the trade mark applied to it or its packaging.
Supplying services under the trade mark.
Therefore importers or manufacturers of goods cannot reply on section 21.
A trade mark owner can defend a claim under section 21 by successfully proving that the alleged infringer has contravened its trade mark rights, therefore making the threat justified. However, the infringer could still succeed under section 21 if it can establish that the trade mark was inaccurately registered, making it invalid.
Will Sander is a solicitor in the corporate and commercial department at Dickinson Dees LLP.
