The exclusion provided in section 70(4) of the 1977 Act is of limited scope. Whatever the legislative intention, it does not give rise to a general entitlement to threaten manufacturers or importers or users. In particular, if a trader both manufactures and sells products and a patentee threatens him with infringement proceedings in respect of both activities, section 70(3) provides a statutory defence in relation to the threats directed at the acts of manufacture, but not in relation to threats directed at acts of selling. Aldous LJ said: ‘Section 70 provides relief against abuse of monopoly . . Subsection (4) is an exception added in the 1977 Act to allow warnings to be given in certain circumstances. In my view the subsection defines the acts of alleged infringement that are excluded and not the type of person who may be threatened. The division between the type of acts in respect of which warnings are allowed without risk of suit and those which are not, can be said to be arbitrary but is sufficient to enable a patentee to give the appropriate warning.’
Judges:
Aldous LJ
Citations:
[1996] RPC 361
Statutes:
Jurisdiction:
England and Wales
Citing:
Cited – Brain v Ingledew Brown Benson and Garrett and Another CA 1996
The defendant firm of solicitors had acted for a Danish Research Institute. They wrote to several parties regarding a patent. B initiated a threat action. IBB appealed against an order striking out their defence, saying that the issue of whether . .
Cited by:
Cited – Prince PLC v Prince Sports Group Inc ChD 1998
In a threat action for trade mark infringement, the plaintiff had only supplied services. The defendant made a general threat without limiting it to proceedings in respect of goods or services. The defendant argued that the threat would be . .
Cited – Best Buy Co Inc and Another v Worldwide Sales Corp. Espana Sl ChD 8-Jul-2010
The claimant accused the defendant of making threats in connection with trade mark applications. The claimants operated under US trade marks associated with ‘Best Buy’ and sought similar marks in Europe. The defendant company traded under a similar . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 18 June 2022; Ref: scu.420496
