Can a take down notification be a threat of infringement proceedings?

If goods that infringe your patent, trade mark or design are offered in an online marketplace, the provider of that marketplace – Amazon, to take the best-known example – will take down the listing if you can prove that the goods infringe your intellectual property. Using take down notices saves you the problems of finding the infringer and serving proceedings on them, probably outside your jurisdiction. But how much can you say in your notification without making a threat?

There have already been several similar cases before in the English courts, but they involved eBay’s VeRO scheme. To invoke that, the owner was required only to say what intellectual property they owned and which listings they considered to infringe it.

The rules about unjustified threats apply to patents, trade marks, registered designs and design right. They don’t apply where the threat made is to sue for manufacturing or importing the infringing items, so they protect against the effect of threats against smaller undertakings in the supply chain, who are probably more easily intimidated. The rules raise three questions: First, what is a threat? Second, what sort of threats are actionable? And third, when is a threat justified?

Taking the last question first, a threat is justified when there really is an infringement. If an alleged infringer brings a threats action, the intellectual property owner has to show that an infringement has been committed – the normal order of things is reversed, and the existence of an infringement becomes a defence rather than a claim.

The legislation sets out what are 'permitted communications', which are basically neutral statements about the existence of intellectual property protection. You are entitled to give notice that you have registered intellectual property rights, and to take steps to find out whether it has been infringed, which is all the VeRO scheme does: but you may not ask the recipient to stop doing anything for commercial purposes in relation to a product or process, or ask them to deliver up or destroy a product, or request that they give undertakings relating to a product or process.

The Court of Appeal recently ruled on the first of these questions, in a case, The NOCO Company v Shenzhen Carku Technology Co Ltd [2023] EWCA Civ 1502 (19 December 2023) that involved the sending of a notification of an alleged intellectual property infringement to Amazon. Did this amount to a threat of litigation against a trader?

First, the notification had been sent to Amazon and not the trader. The Court of Appeal said that the identity of the recipient of a threat makes no difference to whether it is actionable by the intellectual property owner (in this case, the patent owner). The court had initially drawn a distinction between communications to Amazon, which the court said were threats against distributors using Amazon’s platform, and threats against Amazon itself, but the Court of Appeal did not think that this made any difference: either way the threat had what the Court of Appeal referred to as 'causative potency'. Amazon would interpret the notification as a threat of proceedings against 'a person', even though they would be unlikely to think that that 'person' was them. So, directing the threat to the platform operator engages the legislation on groundless threats.

Second, should the notification be understood as a threat or was it communication that is permitted? As long as the notification contained only neutral information about the existence of the patent, there would be no actionable threat.

Amazon’s form gave the complainant an opportunity to say more, and they took that opportunity to state that the listed goods infringed or asked that Amazon remove the listings. That 'additional information', as the box on the form was headed, was what made all the difference and took the notification into unjustified threats territory.

Intellectual Property Partner Jill Bainbridge commented:

Not all communications sent through Amazon’s notification forms amount to threats, but patent, trade mark and design owners must take care when using take down procedures. The form provided by Amazon allows the rights owner to submit neutral information, which the law allows as long as it is not accompanied by express threats and it is not sent for purposes that are not permitted. The 'additional information' box is an invitation to say something you might later regret, so if you plan to use a notification and take down system to deal with a patent, trade mark or design infringement, it’s a wise move to take our advice first to avoid inadvertently making unjustified threats to sue.