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Could the use of take down schemes bring the law on unjustified threats into play?

Tuesday 16 January 2018

What is a take down?

In the UK, if a rights holder identifies a potential infringement on an online market place, like eBay or Amazon, or through social media platforms, such as Twitter or Instagram, it has several options. Most commonly, the rights holder will send a cease and desist letter and/or file a take down notice.

Many user-generated online platforms provide rights holders with an application form to notify the website of infringing material or products, and to request that it is taken down (a take down notice).  Under the E-Commerce Directive the online platform must act expeditiously upon becoming aware of infringing content. If it does not act quickly, the online platform could be at risk of infringing, and unable to avail itself of the exemption to liability set out in the E-Commerce Directive. For that reason, many platforms will take a risk-averse approach and quickly remove content following receipt of the take down notice, without assessing the merits.  An email will be sent to the seller or user notifying them that the content or product has been removed.

Consequently, the take down notice is a very powerful tool. The seller or user is given little opportunity to respond, yet it can find that its content or products are removed without question, potentially resulting in loss sales and damage.

What if, however, the take down was unjustified because, for example, the trade mark relied on was invalidly registered? Can the seller bring a claim against the alleged rights holder for unjustified threats?

The law on unjustified threats

The new Intellectual Property (Unjustified Threats) Act 2017 (the Act) came into force in the UK on 1 October 2017. The Act harmonises the rules relating to unjustified threats for trade marks, patents and designs. Copyright does not fall within the scope of the Act.

The Act amends section 21 of the Trade Marks Act 1994 in relation to Unjustified Threats. Under the new provisions, an action for unjustified threats may be brought by any person aggrieved by a ‘threat’ provided it does not fall within any of the exemptions set out at section 21A. Full details regarding the exemptions are set out here.  Under the new section 21, a communication contains a threat of infringement proceedings if a reasonable person in the position of the recipient would understand from the communication that a registered trade mark exists and a person intends to bring proceedings for infringement of the registered trade mark in the UK.

In the case of take down notices, a message  is relayed to the seller, via the online platform, that their content allegedly infringes rights of a third party, thus constituting “a communication”. The question, therefore, is whether a reasonable person in the position of the [seller] would understand from the communication that a registered trade mark exists and [the trade mark owner] intends to bring proceedings for infringement. Provided the communication contains information regarding the registered trade mark, the seller will understand a trade mark exists. However, whether he would understand that the owner intends to bring proceedings for infringement is a subjective question.

On the one hand, a take down notice is an alternative to court proceedings, a procedure that the owner may be looking to avoid. The rights holder can equally write to the seller detailing its allegations and readiness to initiate proceedings, but here it has chosen not to. Hence, by filing the take down and circumventing court, it is arguable that there is no threat of infringement proceedings.

On the other hand, a take down notice comprises of an allegation that the content infringes the owner’s trade mark, which is enforceable through the UK Courts. Whether or not the content is removed and/or reposted by the seller, it is at risk of infringement proceedings in the UK. Hence, it remains arguable that there is a threat of infringement proceedings.

Historically, the courts have found that a take down notice could constitute a ‘threat’ (see Quads 4 Kids v Campbell [2006] EWHC 2482 (CH) and Cassie Creations Limited v Simon Blackmore and Mirrorkool Limited [2014] EWHC 2941 (Ch)), and there is certainly a strong possibility that a take down filed post October, could also fall foul of the new Act.

Whilst the law remains uncertain,  rights holders should nevertheless take care in filing take down notices as, despite the simplicity and speed of the process, it could result in a claim of unjustified threats.

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