Groundless threats provisions were included in intellectual property (IP) legislation to address the concern that when unjustified threats to sue for infringement of IP rights are made against traders, their fear of being involved in litigation may result in them capitulating and their business being damaged, even if the IP right is invalid and/ or the threat is groundless. Groundless threats provisions were first introduced into patent legislation by the Patents, Trade marks and Designs Act 1883, but there are now similar provisions relating to registered trade marks, registered designs and unregistered designs. The party making the threat can defend a groundless threats action by showing that the acts complained of constitute infringement of the IP right. The statutory provisions also apply to applications to register patents, trade marks or designs. However, particular care should be taken when making a threat in relation to an application for an IP right , as the party making the threat will struggle to justify it, if the application has been granted by the time the court considers the groundless threats legal claim . As a solution, the claimant in a threats action can seek either a declaration that the threats lacked justification, damages or an injunction to prevent further threats against the IP owner by the person making the threat. In a claim for damages the claimant will have to show that damage was caused by the unjustified threat. What amounts to a threat is tested objectively; a threat is made if what is communicated is understood by the ordinary recipient as being a threat of infringement proceedings. A threat can be made orally or in writing. The threat must be read in the context of the correspondence or series of communications as a whole; for example this could take place over the duration of an email thread, or via legal correspondence. It should be noted that any "person" making the threats can be sued and this can include a law firm acting on behalf of its client.
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