The claimant appealed against an order striking out their threat action for trade mark infringement, in respect of the words ‘No Tears’ when used for children’s shampoo.
Held: The court had to consider both the letter and the surrounding circumstances. A threat need not be direct, and conditionality may not be an answer. The thrust of the letter was a warning of the possibility in the future of proceedings for infringement, with contingencies on success of other proceedings. The threat was veiled and muffled by protestations of continuing indecision (which did not ring true) but the threat was sufficient (if not designed) to unsettle the Claimants and the threat was of trade mark infringement proceedings in respect of sales within the United Kingdom.
Lightman said: ‘The policy represented by the first statutory threats provision . . was clearly to stop patentees who were (in Pope’s words about Addison) ‘willing to wound but afraid to strike’ from holding the sword of Damocles above another’s head . . in summary, the term ‘threat’ covers any information that would convey to a reasonable man that some person has trade mark rights and intends to enforce them against another. It matters not that the threat may be veiled or covert, conditional or future. Nor does it matter that the threat is made in response to an enquiry from the party threatened . .’
Mr Justice Lightman
 EWHC Ch 129,  FSR 686
Trade Marks Act 1994 21, Patents, Designs and Trade Marks Act 1883 32
England and Wales
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 – Unilever Plc v The Procter and Gamble Company PatC 24-Feb-1999
Representatives of the Defendant company were said to have asserted, during an expressly ‘without prejudice’ meeting, that the plaintiff’s marketing of its product infringed the Defendant’s patent and threatened to bring an action for infringement. . .
Cited – Unilever plc v Procter and Gamble Company CA 4-Nov-1999
The defendant’s negotiators had asserted in an expressly ‘without prejudice’ meeting, that the plaintiff was infringing its patent and they threatened to bring an action for infringement. The plaintiff sought to bring a threat action under section . .
Cited – Bowden Controls Ltd v Acco Cable Controls Ltd ChD 1990
The parties each made cable mechanisms for cars. There had been a patent dispute in Germany resulting in a finding of infringement, which finding was subject to appeal. A letter was sent in England referring to the German decision, stating that the . .
Cited – Patten v Burke Publishing Ltd ChD 1991
The publisher to whom the plaintiff author had sold the rights to his book became insolvent. He sought a declaration that it would be in breach of the contract.
Held: The guiding principle which determines how the discretion is to be exercised . .
Cited – In re Clay; Clay and Booth CA 1919
A plaintiff is not entitled to a declaration of non-liability where the defendant has neither asserted a contrary right nor made nor formulated an adverse claim. It is oppressive and unjust to subject a defendant to legal proceedings where he has . .
Cited – Wyko Group Plc and Others v Cooper Roller Bearings Co Ltd ChD 4-Dec-1995
A court may not grant a declaratory relief anticipating facts which were not yet in being. There must be in existence of a real question in issue between the parties as to the legal consequences of existing facts. Declaratory relief could not be . .
Cited – Point Solutions Ltd v Focus Business Solutions Ltd and Another ChD 16-Dec-2005
It was claimed that the defendant’s computer software infringed the copyright in software owned by the claimant. A declaration was sought beacause of allegations that assertions about infringement had been made to third parties.
Held: The . .
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 . .
Approved – Best Buy Co Inc and Another v Worldwide Sales Corporation Espana Sl CA 24-May-2011
Appeal against dismissal of claim of trade mark infringement threats by the defendants’ lawyers. The court was asked to consider whether a letter, described as ‘the September letter’ was an actionable threat.
Held: Lord Neuberger MR said: ‘In . .
Cited – Samsung Electronics (UK) Ltd and Another v Apple Inc ChD 4-Apr-2012
The parties were engaged in worldwide litigation disputing an alleged infringement of Apple’s registered design by Samsung’s Galaxy tablet computer. In this case, Samsung sought a declaration of non-infringement. Apple counterclaimed, alleging . .
These lists may be incomplete.
Updated: 21 May 2021; Ref: scu.162991