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Intellectual Property (Unjustified Threats) Act 2017

Discussion in 'Domain Name Disputes' started by Edwin, Mar 31, 2018.

  1. Edwin

    Edwin Well-Known Member Exclusive Member

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    Has anyone come across the "Intellectual Property (Unjustified Threats) Act 2017"?

    It is a new law that seems to have been passed last year, giving more/less/different* protection against frivolous claims of trademark infringement.

    (*I've read a dozen different notes about it on lawfirm websites, and I still can't quite get my head around it. The legal jargon's just too dense.)

    Anyway, I was hoping somebody on here has first-hand experience and could spell out what it means for domain names?

    Here's the original text of the Act
    http://www.legislation.gov.uk/ukpga/2017/14/contents/enacted
     
  2. Domain Forum

    Acorn Domains Elite Member

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  3. inteldigital

    inteldigital Active Member

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    I'm guessing it means, if you don't have a trademark and claim you do to get a domain name, you're in it up to your knees.
     
  4. tocku United Kingdom

    tocku Member

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    Gov.uk has some information in lay terms:

    https://www.gov.uk/government/publi...-for-smes/ip-unjustified-threats-act-for-smes

    It looks like it does offer additional protection against frivolous claims (in the form of damages or an injunction).

    I'm not sure what the exact implications would be for domain names. As Nominet's DRS guidelines point out, a company might be able to demonstrate that they would have the right to use a name but still lose a DRS review.

    For example, Widgets Ltd might have registered the trademark "Acme London" in classes 1,2 and 4 back in 2001. Gadgets R Us Ltd might register the name acme.co.uk today and start selling items in classes 15,16 and 19. In this situation it's reasonable that both firms have a valid claim and Widgets Ltd might be justified in seeking a DRS decision - even if they then lose.

    My interpretation is that the Act is attempting to guide copyright owners towards:
    • establishing that they do have a valid claim before pursuing action
    • avoiding causing undue reputational damage to those that they think are infringing copyright
    • avoid threatening action unless legal advice has been taken first