Court Of Appeal Gives Guidance On Trade Mark Threats And Without Prejudice Communication

The Court of Appeal has reversed a judgment handed down by the High Court last year regarding the provisions governing unlawful threats of trade mark infringement proceedings in the UK. The Court considered that the trial judge had failed to consider the relevant letter as a whole and had focused too greatly on the final three paragraphs, such that the conclusion of the High Court that the letter qualified as without prejudice communication was erroneous. The case provides interesting guidance as to how a threat should be interpreted, and the extent to which a threat may benefit from "without prejudice" protection.

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Summary

The Court of Appeal has reversed a judgment handed down by the High Court last year regarding the provisions governing unlawful threats of trade mark infringement proceedings in the UK. The Court considered that the trial judge had failed to consider the relevant letter as a whole and had focused too greatly on the final three paragraphs, such that the conclusion of the High Court that the letter qualified as without prejudice communication was erroneous. The case provides interesting guidance as to how a threat should be interpreted, and the extent to which a threat may benefit from "without prejudice" protection.

High Court

The unjustified threats provisions specify that, in relation to trade marks and certain other intellectual property rights, any person aggrieved may, subject to certain statutory exceptions, bring an action against the maker of a threat of enforcement proceedings. In August last year we reported on the High Court decision in Best Buy Co. Inc v Worldwide Sales Corporation Espana S.L., please see our previous LawNow for details of the case, which clarified the scope of the statutory exceptions to the unjustified threats proceedings and considered the application of the without prejudice rule.

The High Court held that a threat had been made, but held that since the last three paragraphs of the letter contained genuine offers to negotiate, and requested a response confirming a willingness to start a negotiation process, the letter fell within the protection of the without prejudice rule and so did not constitute a threat when viewed as a whole.

Court of Appeal

On appeal, the Court of Appeal agreed with the High Court that the letter contained a threat of proceedings in the UK and did not fall within the ambit of one of the exceptions. However...