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 understood as relating only to services, as that is all the plaintiff provided.
Held: Section 70 provides a new remedy of a declaration, the grant of which is always discretionary. It may be refused if the application is frivolous, unnecessary, futile, oppressive or otherwise objectionable. In a case where a declaration is granted under Section 21, the Court may decline to grant a wider declaration under the inherent jurisdiction on grounds that it is unnecessary or undesirable. Neuberger J applied the same approach to determining whether a threat of proceedings has been made as was applied in relation to the threats provision in the Patents Act 1977.
The threat was entirely general and there was no basis for saying that it fell within the exception. Neuberger J said: ‘in the end I consider that the language in section 21(1), when read as a whole, is clear . . I consider that one takes the communication, and decides whether it would be understood by a reasonable person in the position of the recipient to be a threat of infringement proceedings. If it is such a threat, then one must decide whether, on its face, the communication nonetheless is outside section 21(1), because it falls within one of the three excepting paragraphs.
Although at first sight this may not appear to comply with the philosophy behind section 21(1), I believe that, on analysis, it does. The section is concerned to ensure that threats of infringement proceedings are not made casually or recklessly, because of the potential damage and concern they can cause. Anyone who wishes to write a letter raising the possibility of infringement proceedings is, therefore, required to consider with care whether he has any case, and, if he is to communicate with another, to take care in expressing himself. If, therefore, the person making such communication wishes to take advantage of one or more of the excepting paragraphs of section 21(1), it is incumbent upon him to indicate this in terms.’
Neuberger J
[1998] FSR 21
Trade Marks Act 1994 21
England and Wales
Citing:
Cited – Cavity Trays Ltd v RMC Panel Products Ltd CA 2-Jan-1996
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 . .
Cited by:
Cited – L’Oreal (UK) Limited and Another v Johnson and Johnson and Another ChD 7-Mar-2000
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 . .
Cited – Asda Stores Ltd v Thompson, Pullan, and Caller EAT 16-Jun-2003
The appellants had been dismissed after investigations satisfied the employer that the employees had been using illegal drugs. Cross appeals were made in the following misconduct unfair dismissal claim. The employees complained of the use of . .
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: 20 January 2022; Ref: scu.180656