The Intellectual Property (Unjustified Threats) Act 2017 updates the law on threats of IP infringement proceedings. It amends existing legislation for patents, registered trade marks, registered designs, design right and Community designs. The Act aims to protect businesses lower in the supply chain from unjustified threats while allowing IP holders to make reasonable enquiries and give notice of their rights.
Main laws
United Kingdom Act
Intellectual Property (Unjustified Threats) Act 2017
The Intellectual Property (Unjustified Threats) Act 2017 updates UK rules on threatening IP infringement proceedings.
Current legislationUnited KingdomPlain-English guide5 practical checks
Plain-English explainers, not legal advice. Use the linked official source for section-level detail, and get advice for your situation.
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Quick read
- The Intellectual Property (Unjustified Threats) Act 2017 matters because it changes how businesses can communicate about intellectual property rights without risking legal claims...
- It covers patents, registered trade marks, registered designs, design right and Community designs.
Likely relevant if
- Businesses that own or license patents and send infringement warnings to manufacturers, importers, distributors or retailers
- Brand owners using registered trade marks to challenge use of signs on goods, packaging or services
- Product designers and design-led businesses relying on registered designs, design right or Community design rights
Check first
- Do not assume an IP warning letter is risk-free; a communication can itself amount to a threat of infringement proceedings.
- Check whether the recipient is someone against whom the threat would be actionable under the relevant IP regime.
- If relying on a permitted communication, keep the purpose within notice-giving or fact-finding and include only information necessary for that purpose.
What this Act does
Key points
- Patents are covered
- Registered trade marks are covered
- Registered designs are covered
- Design right is covered
- Community designs are covered
When a message becomes a threat
A communication becomes a threat of infringement proceedings if a reasonable person in the recipient’s position would understand that an IP right exists and that someone intends to bring proceedings for infringement. This applies to private messages and public statements aimed at specific recipients.
Practical sense check
- Does your message say or imply that a patent, registered trade mark or design right exists?
- Would a reasonable recipient think you intend to sue for infringement?
- Are you referring to acts done in the UK or proposed UK acts?
- Is the message being sent privately, or published more widely to the market?
- Could the wording be read as more than a factual notice?
Who you contact matters
The Act distinguishes between primary acts, such as making or importing products, and secondary acts further down the supply chain. Threats against secondary actors, like retailers or distributors, are more likely to be actionable unless carefully framed as permitted communications.
Permitted communications: what you can usually say
The Act allows certain communications that might otherwise be considered threats, provided they serve a permitted purpose. These include giving notice of an IP right, making enquiries about infringement, or identifying the person responsible for the key infringing act.
Key points
- Giving notice that the IP right exists
- Trying to find out whether infringement has happened
- Trying to identify who carried out the key infringing act
- Giving notice of a right in or under the IP right where awareness matters to later proceedings
- Including only information necessary for that purpose
What is not a permitted purpose
The Act excludes certain actions from being treated as permitted purposes. These include asking someone to stop commercial activity, demanding delivery up or destruction of goods, or requesting undertakings in initial communications.
Practical sense check
- Avoid asking the recipient to cease commercial activity unless you are confident the threat is not actionable
- Avoid demanding delivery up or destruction in an initial enquiry letter
- Avoid demanding undertakings as part of a message you want treated as permitted
- Check whether your wording goes beyond factual notice and investigation
- Review annexes, attachments and draft settlement wording as well as the main letter
Remedies, defences and adviser protection
If an actionable threat is made, the recipient may seek remedies such as a declaration that the threat is unjustified, an injunction to stop the threat, and damages for losses caused. Professional advisers are protected from liability if they act on instructions and identify their client in the communication, but the client may still be liable.
Common questions
What types of IP rights are covered by the Act?
The Act covers patents, registered trade marks, registered designs, design right and Community designs.
What is an actionable threat under the Act?
An actionable threat is a communication that a reasonable recipient would understand as a warning of intended infringement proceedings, which is unjustified under the Act's rules.
What are permitted communications?
Permitted communications include giving notice of an IP right, making enquiries to identify infringement, or providing information necessary for a permitted purpose.
What remedies are available for unjustified threats?
Remedies include a declaration that the threat is unjustified, an injunction to stop the threat, and damages for losses caused by the threat.
Can professional advisers be held liable for unjustified threats?
Professional advisers are protected from liability if they act on instructions from a client and identify the client in the communication. However, the client may still be liable.