When is a warning a threat?
Back to summary of Threats Law
When it is drafted with extreme cunning?
If you think that you can draft round the problem consider the words of Mr Justice Lightman in L’Oreal (UK) Ltd v Johnson & Johnson [2000] FSR 686:
“The Letter [said to constitute an unjustified threat] is the work of a master of Delphic utterances who uses all his skills to say everything and nothing and to convey an enigmatic message which has the same effect on the recipient as a threat or adverse claim while disclaiming to be either”.
In other words, if your purpose is to threaten, then it is pretty certain that the communication you prepare will be held to have that effect. The only safe option, if you have doubts about the other available defences, is to stick to the “mere notification” language.
I believe that risk management is to be achieved in the analysis of the risk and not in the detailed drafting. In other words if you and the client are happy with the level of risk then write the threat in unequivocal terms. If you find yourself adopting cautious drafting then your initial analysis was probably faulty and needs to be re-visited.
Some examples of attempts to draft round the problem:
· In the L’Oreal case referred to above Johnson and Johnson had a trade mark that had been registered in both the UK and Ireland. It issued infringement proceedings against L’Oreal in Ireland. It then wrote to L’Oreal’s solicitors in England, responding to an earlier request for confirmation that proceedings would not be commenced in respect of the equivalent UK registrations. The letter:
o Confirmed that proceedings had been commenced in Ireland;
o Stated that the UK management of Johnson & Johnson considered that L’Oreal was infringing the UK registration but that no decision had yet been made on whether to commence proceedings;
o Mentioned that third parties had used the mark in the past but had now agreed to respect Johnson & Johnson’s rights and to stop using the mark complained of;
o Stated that investigations were continuing into the relevant facts and law and pointed out that Johnson & Johnson had the whole of the six year limitation period in which to decide whether or not to issue proceedings;
o Concluded by refusing to give the confirmations requested.
In other words, it did everything except threaten. But, as the quotation from the judgment of Lightman J makes clear, it was interpreted as doing just that.
· A solicitor’s letter to the primary infringer which said that the clients “…take an extremely serious view…” and will “take the appropriate action”. Held – arguably a threat (on a strike out application) – Brain v Ingledew Brown Benison & Garrett [1996] FSR 341.
· A solicitor’s letter to the alleged infringer’s customer stating that its client “…intends to take appropriate action to restrain the infringement of its rights…as well as seeking damages for all past…infringements…” but not saying that it would bring such action against the customer. Held – arguably a threat – Brown v Ingledew Brown again.
· “We are the owners of a patent for … your working is an infringement of it, which we cannot allow”. Held – threat – Kurtz v Spence (1888) 5 RPC 161
· “…our clients are prepared to protect their interests with the utmost vigour” threat – Rosedale Associated Manufacturing Ltd v Airfix Products Ltd [1956] RPC 360.
· A wrote to a customer of B and drew attention to a German court decision to the effect that B’s product infringed A’s patent. A added that it owned corresponding patents throughout Europe. It then said that it was its intention to enforce those patents “in a realistic manner” and “ensure all current customers’ requirements are properly safeguarded”. Held – arguable case, interim injunction granted – Arco v Bowden [1990] RPC 427
· The patent proprietor wrote to the Ministry of Health. The Ministry was not itself threatened but the judge decided that the letter had been written with the direct object of persuading the Ministry to instruct individual hospitals not to buy the allegedly infringing product, or at least to discourage them from doing so. Held – it constituted an implied threat that the hospitals’ source of supply would be cut off by court process – Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157
· A trade announcement - “Notice to grocers and others. Information of extensive violation of Mr William Edge’s patent rights has been received. All parties are warned not to infringe those rights”. Held – threat; although sent to the trade, those receiving it would know that there were only one or two traders producing products similar to those of the patentee and the “general warning” therefore operated as a threat to those traders even though they were not named in it – Johnson v Edge (1892) 9 RPC 142. ( This has to be balanced against the words of Bowen LJ in the even older case of Challander v Royle (1887) 4 RPC 363 – “Everybody, it seems to me, has still a right to issue a general warning to pirates not to pirate, and to infringers not to infringe, and to warn the public that the patent to which the patentee is entitled…is one which he intends to enforce”. The lesson is that general announcements should be drafted in terms that do not, expressly or impliedly, identify any particular suspect.)
So what is the test?
A threat can be veiled or implied but still be actionable.
In the L’Oreal case Lightman J said that the test to apply was whether the communication in question would be understood by the ordinary recipient in the position of the party receiving the communication as constituting a threat of proceedings for infringement. He relied in particular on the judgment of Aldous J in Brain v Ingledew Brown in which he said:
“…the conclusion as to whether a document amounts to a threat of patent proceedings is essentially one of fact. It is a jury-type decision to be decided against the appropriate matrix of fact. Thus a letter or statement may on its face seem innocuous, but when placed in context it could be a threat of proceedings”.
In one of the older cases the test was expressed slightly differently in relation to an aural exchange. One had to assume that a bystander overheard the conversation and would have understood that one of the parties was threatening the other with litigation see Luna Advertising Co Ltd v Burnham & Co (1928) 45 RPC 258
When it is not committed to writing?
No. As confirmed in several cases e.g. Luna Advertising Co Ltd v Burnham & Co (above).
When it is communicated in a without prejudice meeting or in correspondence marked “without prejudice.
Possibly. It was in Unilever v Proctor & Gamble [2000] FSR 344. But not if the attempt to use the protection was contrived, so as to amount to an abuse of the rule. So simply marking a threatening letter “without prejudice” when it did not constitute part of a genuine settlement dialogue would not prevent the threat being actionable – Kooltrade Ltd v TS [2001] FSR 13.
When it is made in response to a request to clarify the position?
Probably not – see, for example, the L’Oreal case above in which the threat was made in response to a solicitor’s letter asking for confirmation that proceedings would not be commenced. But doubts were expressed, on the particular facts of the case, in Alpi-Pietro e Figlio & Co v John Wright & Sons (Veneers) Ltd [1971] FSR 510 and it was said that for an interim injunction it would be necessary to show that a repetition of the threat to others was likely. Of course, if the other side initiate the dialogue it should be easier to ensure that subsequent communications are properly characterised as being “without prejudice”