Reform history

> (a) is made to a person who has done, or intends to do, an act mentioned in subsection (2)(a) or (b) in relation to a product or process, and

> (b) is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to that product or process.

> (5) A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication.

> (70B)

> (1) For the purposes of section 70A(5), a communication containing a threat of infringement proceedings is a “permitted communication” if—

> (a) the communication, so far as it contains information that relates to the threat, is made for a permitted purpose;

> (2) Each of the following is a “permitted purpose”—

> (a) giving notice that a patent exists;

> (b) discovering whether, or by whom, a patent has been infringed by an act mentioned in section 70A(2)(a) or (b);

> (3) The court may, having regard to the nature of the purposes listed in subsection (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so.

> (4) But the following may not be treated as a “permitted purpose”—

> (a) requesting a person to cease doing, for commercial purposes, anything in relation to a product or process,

> (b) an injunction against the continuance of the threat;

> (c) damages in respect of any loss sustained by the aggrieved person by reason of the threat.

> (2) In the application of subsection (1) to Scotland—

> (3) It is a defence for the person who made the threat to show that the act in respect of which proceedings were threatened constitutes (or if done would constitute) an infringement of the patent.

> (4) It is a defence for the person who made the threat to show—

> (a) that, despite having taken reasonable steps, the person has not identified anyone who has done an act mentioned in section 70A(2)(a) or (b) in relation to the product or the use of a process which is the subject of the threat, and

> (b) that the person notified the recipient, before or at the time of making the threat, of the steps taken.

> (70D)

> (1) Proceedings in respect of an actionable threat may not be brought against a professional adviser (or any person vicariously liable for the actions of that professional adviser) if the conditions in subsection (3) are met.

> (a) is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, and

> (b) is regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means).

> (3) The conditions are that—

> (a) in making the communication the professional adviser is acting on the instructions of another person, and

> (b) when the communication is made the professional adviser identifies the person on whose instructions the adviser is acting.

> (4) This section does not affect any liability of the person on whose instructions the professional adviser is acting.

> (a) the person concerned was acting as a professional adviser, and

> (b) the conditions in subsection (3) were met.

> (70E)

- (3) In section 70F (inserted by subsection (2)) at the end insert “and proceedings in the Unified Patent Court for an order for delivery up made in accordance with articles 32(1)(c) and 62(3) of the Agreement on a Unified Patent Court.”

### Trade marks

> (a) is made to a person who has done, or intends to do, an act mentioned in subsection (2)(c) in relation to services, and

> (b) is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to those services.

> (6) A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication.

> (21B)

> (a) the communication, so far as it contains information that relates to the threat, is made for a permitted purpose;

> (b) all of the information that relates to the threat is information that—

> (i) is necessary for that purpose (see subsection (5)(a) to (c) for some examples of necessary information), and

> (2) Each of the following is a “permitted purpose”—

> (a) giving notice that a registered trade mark exists;

> (b) discovering whether, or by whom, a registered trade mark has been infringed by an act mentioned in section 21A(2)(a), (b) or (c);

> (3) The court may, having regard to the nature of the purposes listed in subsection (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so.

> (4) But the following may not be treated as a “permitted purpose”—

> (a) requesting a person to cease using, in the course of trade, a sign in relation to goods or services,

> (b) that the person notified the recipient, before or at the time of making the threat, of the steps taken.

> (21D)

> (1) Proceedings in respect of an actionable threat may not be brought against a professional adviser (or any person vicariously liable for the actions of that professional adviser) if the conditions in subsection (3) are met.

> (a) is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, and

> (b) is regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means).

> (3) The conditions are that—

##### 3

- (3) After paragraph (1) insert—

> (2) In the application of sections 21 and 21B in relation to an international trade mark (EC), references to a registered trade mark are to be treated as references to an international trade mark (EC) in respect of which particulars of an international registration designating the European Union have been published in accordance with Article 152 of the European Union Trade Mark Regulation.

> (3) In the application of section 21C in relation to an international trade mark (EC) in a case where the threat of infringement proceedings is made after particulars have been published (but before registration) the reference in section 21C(2) to “the registered trade mark” is to be treated as a reference to the international trade mark (EC) registered in pursuance of those particulars.

### Registered designs, design right and Community design

- (1) The Registered Designs Act 1949 is amended as follows.

- (3) For section 26 (remedy for unjustified threats of infringement proceedings) substitute—

> (a) is made to a person who has done, or intends to do, an act mentioned in subsection (2)(a) or (b) in relation to a product, and

> (b) is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to that product.

> (5) A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication.

> (26B)

> (1) For the purposes of section 26A(5), a communication containing a threat of infringement proceedings is a “permitted communication” if—

> (a) the communication, so far as it contains information that relates to the threat, is made for a permitted purpose;

> (2) Each of the following is a “permitted purpose”—

> (a) giving notice that a registered design exists;

> (b) discovering whether, or by whom, the right in a registered design has been infringed by an act mentioned in section 26A(2)(a) or (b);

> (3) The court may, having regard to the nature of the purposes listed in subsection (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so.

> (4) But the following may not be treated as a “permitted purpose”—

> (a) requesting a person to cease doing, for commercial purposes, anything in relation to a product in which a design is incorporated or to which it is applied,

> (b) that the person notified the recipient, before or at the time of making the threat, of the steps taken.

> (26D)

> (1) Proceedings in respect of an actionable threat may not be brought against a professional adviser (or any person vicariously liable for the actions of that professional adviser) if the conditions in subsection (3) are met.

> (a) is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, and

> (b) is regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means).

> (3) The conditions are that—

> (a) proceedings for an order under section 24C (order for delivery up), and

> (b) proceedings for an order under section 24D (order as to disposal of infringing articles).

- (5) In section 45 (application to Scotland) after subsection (1) insert—

#### Design right

> (a) is made to a person who has done, or intends to do, an act mentioned in subsection (2)(a) or (b) in relation to an article, and

> (b) is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to that article.

> (5) A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication.

> (253B)

> (1) For the purposes of section 253A(5), a communication containing a threat of infringement proceedings is a “permitted communication” if—

> (a) the communication, so far as it contains information that relates to the threat, is made for a permitted purpose;

> (2) Each of the following is a “permitted purpose”—

> (a) giving notice that design right subsists in a design;

> (b) discovering whether, or by whom, design right in a design has been infringed by an act mentioned in section 253A(2)(a) or (b);

> (3) The court may, having regard to the nature of the purposes listed in subsection (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so.

> (4) But the following may not be treated as a “permitted purpose”—

> (a) requesting a person to cease doing, for commercial purposes, anything in relation to an article made to a design,

> (b) that the person notified the recipient, before or at the time of making the threat, of the steps taken.

> (253D)

> (1) Proceedings in respect of an actionable threat may not be brought against a professional adviser (or any person vicariously liable for the actions of that professional adviser) if the conditions in subsection (3) are met.

> (a) is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, and

> (b) is regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means).

> (3) The conditions are that—

> (a) proceedings for an order under section 230 (order for delivery up), and

> (b) proceedings for an order under section 231 (order as to disposal of infringing articles).

.

#### Community design

##### 6

- (2) For regulation 2 (remedy for unjustified threats of infringement proceedings) substitute—

> (a) is made to a person who has done, or intends to do, an act mentioned in paragraph (2)(a) or (b) in relation to an article, and

> (b) is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to that article.

> (5) A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication.

> (2B)

> (1) For the purposes of regulation 2A(5), a communication containing a threat of infringement proceedings is a “permitted communication” if—

> (a) the communication, so far as it contains information that relates to the threat, is made for a permitted purpose;

> (2) Each of the following is a “permitted purpose”—

> (a) giving notice that a Community design exists;

> (b) discovering whether, or by whom, a Community design has been infringed by an act mentioned in regulation 2A(2)(a) or (b);

> (3) The court may, having regard to the nature of the purposes listed in paragraph (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so.

> (4) But the following may not be treated as a “permitted purpose”—

> (a) requesting a person to cease doing, for commercial purposes, anything in relation to an article made to a design, in which a design is incorporated or to which it is applied,

> (b) that the person notified the recipient, before or at the time of making the threat, of the steps taken.

> (2D)

> (1) Proceedings in respect of an actionable threat may not be brought against a professional adviser (or any person vicariously liable for the actions of that professional adviser) if the conditions in paragraph (3) are met.

> (a) is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, and

> (b) is regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means).

> (3) The conditions are that—

- (3) In regulation 5A(1) (application to Scotland) at the appropriate place insert—

.

- (2) The following provisions also extend to the Isle of Man, subject to such modifications as Her Majesty may by Order in Council provide—

- (b) section 2;

- (2) The other provisions of this Act come into force on such day or days as the Secretary of State may by regulations made by statutory instrument appoint.

- (a) appoint different days for different purposes;

[^key-12f72d1488eab1fdd52103cc1f3ecfc2]: [S. 6](https://www.legislation.gov.uk/ukpga/2017/14/section/6) in force at 1.10.2017 by [S.I. 2017/771](https://www.legislation.gov.uk/uksi/2017/771), [reg. 2(1)(b)](https://www.legislation.gov.uk/uksi/2017/771/regulation/2/1/b) (with [reg. 3](https://www.legislation.gov.uk/uksi/2017/771/regulation/3))

[^key-67ddaadbeb9c7068b4cc2e3d3d6f23ff]: [S. 7(4)](https://www.legislation.gov.uk/ukpga/2017/14/section/7/4) in force at 1.10.2017 by [S.I. 2017/771](https://www.legislation.gov.uk/uksi/2017/771), [reg. 2(1)(c)](https://www.legislation.gov.uk/uksi/2017/771/regulation/2/1/c) (with [reg. 3](https://www.legislation.gov.uk/uksi/2017/771/regulation/3))