Gowers Review: solicitors and clients at risk of being sued

Solicitors have called for the abolition of the threats provisions in design and trade mark law, which they say create a 'sue first, talk later' approach and puts individuals at risk of court action for trying to protect their rights.


Currently anyone aggrieved by threats of trade mark or design infringement proceedings can bring legal proceedings for 'groundless threats' against the sender of the letter containing the allegations or the other person making the threat.


In its response to the Treasury-instigated Gowers Review of intellectual property (IP), the Law Society said the current position was 'illogical and inconsistent' and put solicitors and their clients in jeopardy of being sued for making actionable threats, simply by reason of sending what would otherwise be an uncontroversial letter before action.


The possibility of an action for groundless threats was introduced by the Patents Trademarks and Designs Act 1883 to rein in abuse by patent owners and encourage them to only threaten proceedings were they could be justified.


But the Society said the provision runs counter to the over-arching principle of the Civil Procedure Rules to communicate and settle rather than issue legal proceedings.


Kevin Martin, Law Society President, said that with no equivalent action applicable to threats of infringement for copyright, passing-off and various other IP rights, their existence in relation to trade marks and design leads to solicitors writing letters before action referring only to certain IP rights, when different rights are going to be asserted on the issue of proceedings.


In its response, the City of London Law Society suggested a better position would be to provide a statutory right under all IP legislation for a defendant to apply to the court for a declaration of non-infringement as a way of drawing a line under any unfounded allegations.