This guidance note is for people who receive an unexpected letter or email about an IP matter, and who don’t currently have their own professional advisor. It is just a general note and does not relate to any particular situation or case. Of course, this note is no substitute for professional legal advice, and if you are faced with the possibility of legal action for the infringement of an IP right, you are recommended to obtain professional advice at an early stage.
I’ve received a letter or email
There are many types of correspondence you might receive which relate to IP matters. Some examples are:
- a letter which just draws your attention to a particular IP right
- a letter or email to say that your product cannot be sold on an online marketplace or auction site because of a complaint made against you that the product infringes an IP right
- a letter from the UKIPO to say that you have been named as an interested party in a request for an IPO opinion
- a letter to say that your domain name, company name or trade mark application conflicts with an existing company
What does it mean?
Of course, the letter or email might explain things clearly and fully. But if that is not the case, you need to find out what it might mean to you and your business.
Why would someone simply tell me about an IP right?
There are various reasons.
Fundamentally, this type of correspondence could represent the very first stage in a possible legal dispute over the IP right. So even though the letter might look bland, you need to take it seriously.
In some situations, the writer might just want to be able to say that you definitely knew about the existence of the IP right from a certain date. This can stop you claiming later (if a dispute develops) that any infringement of the right is mitigated by your not knowing about the IP right.
But why send me such a bland letter rather than fully explaining the whole issue?
This question brings us to thinking about your own rights in the situation. Several pieces of IP legislation include provisions relating to “groundless threats”. What this means is that other people are not allowed to threaten you over infringement of some IP rights, unless the threat can be justified. If someone makes an unjustifiable threat against or about you, and it damages your own business, you could in fact take legal action against them.
There are some things which can generally be done without contravening the threats provisions. For example, it can be possible just to notify someone of the existence of an IP right, without that notification being considered a “threat”. So one reason why you might receive a letter like this is because the sender wants to avoid the threats provisions.
So if my letter is not a “threat”, what actually is it, and what should I do?
Just because a letter may have been written to avoid the threats provisions, this doesn’t mean that you should ignore it. Instead, you should investigate why someone might have drawn your attention to that IP right, and seek advice where needed.
Sometimes, this type of letter could in fact be saying “I would like to threaten you over the infringement of my IP right but I am just being careful with what I write at this early stage”. So from your point of view, you should possibly treat the letter as carefully as you would if it was actually threatening you with infringement.
Some steps you may consider include:
- obtaining a copy of the IP right
- checking its current status – is it in force?
- carefully reviewing the IP right in the context of your current business activities and product lines
- asking the writer of the letter for more information
- obtaining professional advice
But above all, you should not ignore a letter of this nature; it may be groundless, but on the other hand it could be an initial stage of a dispute which might have the potential to damage your business.
Who could advise me?
Patent Attorneys, Trade Mark Attorneys and Solicitors can provide advice. If you don’t already have an advisor, you could find one from the lists held by:
But if there is even a possibility of an infringement dispute, you should consider choosing an advisor who specialises in contentious matters or litigation. Ask them about their experience or qualifications in these areas before you appoint them.
How much will it cost?
This isn’t a question that can be answered in this type of general note. One reason is that the facts of each case can be very different. When you are first talking to a potential advisor, try to explain the situation as completely and clearly as you can, and don’t withhold any information which could be relevant. Ask whether the advisor offers an initial brief consultation at a reduced cost, and be sure to ask the advisor about the expected costs at each stage of any work or advice which you might commission. But please bear in mind that even your advisor may not be able to give an accurate prediction of future costs, because there are so many factors which may vary from case to case.