Intellectual Property 
(Unjustified Threats) 
Act 2017
CHAPTER 14
Explanatory Notes have been produced to assist in the
understanding of this Act and are available separately
£6.00Intellectual Property (Unjustified 
Threats) Act 2017
CHAPTER 14
CONTENTS
Patents
1P a t e n t s
Trade marks
2 Trade marks
3 European Union trade marks
Registered designs, design right and Community design
4 Registered designs
5D e s i g n  r i g h t
6 Community design
Final provisions
7E x t e n t
8C o m m e n c e m e n t
9 Short titleELIZABETH II c. 14
Intellectual Property (Unjustified 
Threats) Act 2017
2017 CHAPTER 14
An Act to amend the law relating to unjustified threats to bring proceedings
for infringement of patents, register ed trade marks, rights in registered
designs, design right or Comm unity designs. [27th April 2017]
E IT ENACTED  by the Queen’s most Excellent Majesty, by and with the advice and
consent of the Lords Spiritual and Te mporal, and Commons, in this present
Parliament assembled, and by the authority of the same, as follows:— 
Patents
1P a t e n t s
(1) The Patents Act 1977 is amended as follows.
(2) For section 70 (remedy for unjustifie d threats of infringement proceedings)
substitute—
“Unjustified threats
70 Threats of infringement proceedings
(1) A communication contains a “threat of infringement proceedings” if a
reasonable person in the position of a recipient would understand from
the communication that—
(a) a patent exists, and
(b) a person intends to bring proceedings (whether in a court in the
United Kingdom or elsewhere) against another person for
infringement of the patent by—
(i) an act done in the United Kingdom, orBIntellectual Property (Unj ustified Threats) Act 2017 (c. 14) 2
(ii) an act which, if done, would be done in the United
Kingdom.
(2) References in this section and in se ction 70C to a “recipient” include, in
the case of a communication directed to the public or a section of the
public, references to a person to whom the communication is directed.
70A Actionable threats
(1) Subject to subsections (2) to (5),  a threat of infringement proceedings
made by any person is actionable  by any person aggrieved by the
threat.
(2) A threat of infringement proc eedings is not actionable if the
infringement is alleged to consist of—
(a) where the invention is a product, making a product for disposal
or importing a product for disposal, or
(b) where the invention is a process, using a process.
(3) A threat of infringement proc eedings is not actionable if the
infringement is alleged to consist of an act which, if done, would
constitute an infringement of a kind mentioned in subsection (2)(a) or(b).
(4) A threat of infringement proceedings is not actionable if the threat—
(a) is made to a person who has done, or intends to do, an act
mentioned in subsection (2)(a) or (b) in relation to a product or
process, and
(b) is a threat of proceedings for an  infringement alleged to consist
of doing anything else in relati on to that product or process.
(5) A threat of infringement proceedings which is not an express threat is
not actionable if it is contai ned in a permitted communication.
(6) In sections 70C and 70D “an actionable threat” means a threat of
infringement proceedings that is ac tionable in accordance with this
section.
70B Permitted communications
(1) For the purposes of section 70A(5), a communication containing a
threat of infringement proceedings is a “permitted communication”if—
(a) the communication, so far as it contains information that relates
to the threat, is made for a permitted purpose;
(b) all of the information that rela tes to the threat is information
that—
(i) is necessary for that purpose (see subsection (5)(a) to (c)
for some examples of necessary information), and
(ii) the person making th e communication reasonably
believes is true.
(2) Each of the following is  a “permitted purpose”—
(a) giving notice that  a patent exists;
(b) discovering whether, or by whom, a patent has been infringed
by an act mentioned in section 70A(2)(a) or (b);Intellectual Property (Unjus tified Threats) Act 2017 (c. 14) 3
(c) giving notice that a person has a right in or under a patent,
where another person’s awareness of  the right is relevant to any
proceedings that may be brough t in respect of the patent.
(3) The court may, having regard to th e nature of the purposes listed in
subsection (2)(a) to (c), treat any other purpose as a “permitted
purpose” if it considers that it is in the interests of justice to do so.
(4) But the following may not be treated as a “permitted purpose”—
(a) requesting a person to cease doing, for commercial purposes,
anything in relation to a product or process,
(b) requesting a person to deliver up or destroy a product, or
(c) requesting a person to give an undertaking relating to a product
or process.
(5) If any of the following informatio n is included in a communication
made for a permitted purpose, it is information that is “necessary for
that purpose” (see subsection (1)(b)(i))—
(a) a statement that a patent exists and is in force or that an
application for a patent has been made;
(b) details of the patent, or of a right in or under the patent, which—
(i) are accurate in all material respects, and
(ii) are not misleading in any material respect; and
(c) information enabling the iden tification of the products or
processes in respect of which it is alleged that acts infringing the
patent have been carried out.
70C Remedies and defences
(1) Proceedings in respect of an actionable threat may be brought against
the person who made the threat for—
(a) a declaration that the threat is unjustified;
(b) an injunction against the continuance of the threat;
(c) damages in respect of any lo ss sustained by the aggrieved
person by reason of the threat.
(2) In the application of su bsection (1) to Scotland—
(a) “declaration” means “declarator”, and
(b) “injunction” means “interdict”.
(3) It is a defence for the person who made the threat to show that the act
in respect of which proceedings were threatened constitutes (or if donewould constitute) an infringement of the patent.
(4) It is a defence for the person  who made the threat to show—
(a) that, despite having taken reasonable steps, the person has not
identified anyone who has done an act mentioned in section70A(2)(a) or (b) in relation to th e product or the use of a process
which is the subject of the threat, and
(b) that the person notified the reci pient, before or at the time of
making the threat, of the steps taken.
70D Professional advisers
(1) Proceedings in respect of an ac tionable threat may not be brought
against a professional adviser (or any person vicariously liable for theIntellectual Property (Unj ustified Threats) Act 2017 (c. 14) 4
actions of that professional adviser) if the conditions in subsection (3)
are met.
(2) In this section “professional advise r” means a person who, in relation
to the making of the communication containing the threat—
(a) is acting in a professional capa city in providing legal services or
the services of a trade mark atto rney or a patent attorney, and
(b) is regulated in the provision of legal services, or the services of
a trade mark attorney or a patent attorney, by one or moreregulatory bodies (whether through membership of aregulatory body, the issue of a lic ence to practise or any other
means).
(3) The conditions are that—
(a) in making the communication th e professional adviser is acting
on the instructions of another person, and
(b) when the communication is made the professional adviser
identifies the person on whose in structions the adviser is acting.
(4) This section does not affect an y liability of the person on whose
instructions the professional adviser is acting.
(5) It is for a person asserting that subsection (1) appl ies to prove (if
required) that at the material time—
(a) the person concerned was acting as a professional adviser, and
(b) the conditions in subsection (3) were met.
70E Supplementary: pending registration
(1) In sections 70 and 70B references to a patent include references to an
application for a patent that has been published under section 16.
(2) Where the threat of infringement proceedings is made after an
application has been published (but before grant) the reference insection 70C(3) to “the patent” is to be treated as a reference to the patentas granted in pursuance of that application.
70F Supplementary: proceedings for delivery up etc.
In section 70(1)(b) the reference to proceedings for infringement of apatent includes a reference to proceedings for an order under section61(1)(b) (order to deliver up or destroy patented products etc.).”
(3) In section 70F (inserted by subsection (2)) at the end insert “and proceedings in
the Unified Patent Court for an order fo r delivery up made in accordance with
articles 32(1)(c) and 62(3) of the Ag reement on a Unified Patent Court.”
(4) Before section 71 insert—
“Declaration or declarator as to non-infringement”.
(5) In section 74 (proceedings in which vali dity of a patent may be put in issue) in
subsection (1)(b), for “under section 70” substitute “in respect of an actionablethreat under section 70A”.
(6) In section 78 (effect of filing an a pplication for a European patent (UK)), in
subsection (2) at the appropriate place insert “sections 70 to 70F”.Intellectual Property (Unjus tified Threats) Act 2017 (c. 14) 5
(7) In section 106 (costs and expenses in proceedings before the Court) in
subsection (1A)(c), for “under section 70” substitute  “in respect of an actionable
threat under section 70A”.
(8) In paragraph 2 of Schedule A3 (applicat ion of relevant statutory provisions to
European patent with unitary effect) at  the appropriate plac e insert “sections
70 to 70F (unjustified threats);”.
Trade marks
2T r a d e  m a r k s
(1) The Trade Marks Act 1994 is amended as follows.
(2) For section 21 (remedy for unjustifie d threats of infringement proceedings)
substitute—
“Unjustified threats
21 Threats of infringement proceedings
(1) A communication contains a “threat of infringement proceedings” if a
reasonable person in the position of a recipient would understand from
the communication that—
(a) a registered trade mark exists, and
(b) a person intends to bring proceedings (whether in a court in the
United Kingdom or elsewhere) against another person for
infringement of the registered trade mark by—
(i) an act done in the United Kingdom, or
(ii) an act which, if done, would be done in the United
Kingdom.
(2) References in this section and in se ction 21C to a “recipient” include, in
the case of a communication directed to the public or a section of thepublic, references to a person to whom the communication is directed.
21A Actionable threats
(1) Subject to subsections (2) to (6),  a threat of infringement proceedings
made by any person is actionable  by any person aggrieved by the
threat.
(2) A threat of infringement proc eedings is not actionable if the
infringement is alleged to consist of—
(a) applying, or causing another pers on to apply, a sign to goods or
their packaging,
(b) importing, for disposal, goods to  which, or to the packaging of
which, a sign has been applied, or
(c) supplying services under a sign.
(3) A threat of infringement proc eedings is not actionable if the
infringement is alleged to consist of an act which, if done, would
constitute an infringement of a kind mentioned in subsection (2)(a), (b)or (c).
(4) A threat of infringement proceedings is not actionable if the threat—Intellectual Property (Unj ustified Threats) Act 2017 (c. 14) 6
(a) is made to a person who has done, or intends to do, an act
mentioned in subsection (2)(a) or (b ) in relation to goods or their
packaging, and
(b) is a threat of proceedings for an  infringement alleged to consist
of doing anything else in rela tion to those goods or their
packaging.
(5) A threat of infringement proceedings is not actionable if the threat—
(a) is made to a person who has done, or intends to do, an act
mentioned in subsection (2)(c) in relation to services, and
(b) is a threat of proceedings for an  infringement alleged to consist
of doing anything else in relation to those services.
(6) A threat of infringement proceedings which is not an express threat is
not actionable if it is containe d in a permitted communication. 
(7) In sections 21C and 21D “an actionable threat” means a threat of
infringement proceedings that is ac tionable in accordance with this
section.
21B Permitted communications
(1) For the purposes of section 21A(6), a communication containing a
threat of infringement proceedings is a “permitted communication”
if—
(a) the communication, so far as it contains information that relates
to the threat, is made for a permitted purpose; 
(b) all of the information that rela tes to the threat is information
that—
(i) is necessary for that purpose (see subsection (5)(a) to (c)
for some examples of necessary information), and
(ii) the person making th e communication reasonably
believes is true.
(2) Each of the following is  a “permitted purpose”—
(a) giving notice that a regi stered trade mark exists;
(b) discovering whether, or by wh om, a registered trade mark has
been infringed by an act mentioned in section 21A(2)(a), (b) or(c);
(c) giving notice that a person has a right in or under a registered
trade mark, where another person ’s awareness of the right is
relevant to any proceedings that may be brought in respect ofthe registered trade mark.
(3) The court may, having regard to th e nature of the purposes listed in
subsection (2)(a) to (c), treat any other purpose as a “permitted
purpose” if it considers that it is in the interests of justice to do so.
(4) But the following may not be treated as a “permitted purpose”—
(a) requesting a person to cease usin g, in the course of trade, a sign
in relation to goods or services,
(b) requesting a person to deliver up or destroy goods, or
(c) requesting a person to give an undertaking relating to the use of
a sign in relation to goods or services.Intellectual Property (Unjus tified Threats) Act 2017 (c. 14) 7
(5) If any of the following informatio n is included in a communication
made for a permitted purpose, it is information that is “necessary for
that purpose” (see subsection (1)(b)(i))—
(a) a statement that a registered tr ade mark exists and is in force or
that an application for the registration of a trade mark has been
made;
(b) details of the registered trade ma rk, or of a right in or under the
registered trade mark, which—
(i) are accurate in all material respects, and
(ii) are not misleading in any material respect; and
(c) information enabling the identi fication of the goods or their
packaging, or the services, in rela tion to which it is alleged that
the use of a sign constitutes an  infringement of the registered
trade mark.
21C Remedies and defences
(1) Proceedings in respect of an actionable threat may be brought against
the person who made the threat for—
(a) a declaration that the threat is unjustified;
(b) an injunction against the continuance of the threat;
(c) damages in respect of any lo ss sustained by the aggrieved
person by reason of the threat.
(2) It is a defence for the person who made the threat to show that the act
in respect of which proceedings were threatened constitutes (or if donewould constitute) an infringement  of the registered trade mark.
(3) It is a defence for the person  who made the threat to show—
(a) that, despite having taken reasonable steps, the person has not
identified anyone who has done an act mentioned in section21A(2)(a), (b) or (c) in relation to the goods or their packaging orthe services which are the subject of the threat, and
(b) that the person notified the reci pient, before or at the time of
making the threat, of the steps taken.
21D Professional advisers
(1) Proceedings in respect of an ac tionable threat may not be brought
against a professional adviser (or any person vicariously liable for theactions of that professional adviser) if the conditions in subsection (3)are met.
(2) In this section “professional advise r” means a person who, in relation
to the making of the communication containing the threat—
(a) is acting in a professional capa city in providing legal services or
the services of a trade mark atto rney or a patent attorney, and
(b) is regulated in the provision of legal services, or the services of
a trade mark attorney or a patent attorney, by one or moreregulatory bodies (whether through membership of aregulatory body, the issue of a lic ence to practise or any other
means).
(3) The conditions are that—
(a) in making the communication th e professional adviser is acting
on the instructions of another person, andIntellectual Property (Unj ustified Threats) Act 2017 (c. 14) 8
(b) when the communication is made the professional adviser
identifies the person on whose in structions the adviser is acting.
(4) This section does not affect an y liability of the person on whose
instructions the professional adviser is acting.
(5) It is for a person asserting that subsection (1) appl ies to prove (if
required) that at the material time—
(a) the person concerned was acting as a professional adviser, and
(b) the conditions in subsection (3) were met.
21E Supplementary: pending registration
(1) In sections 21 and 21B references to a registered trade mark include
references to a trade mark in respect of which an application for
registration has been published under section 38.
(2) Where the threat of infringement proceedings is made after an
application for registration has been published (but before registration)the reference in section 21C(2) to “the registered trade mark” is to betreated as a reference to the trade ma rk registered in pursuance of that
application.
21F Supplementary: proceedings for delivery up etc.
In section 21(1)(b) the reference to proceedings for infringement of aregistered trade mark in cludes a reference to—
(a) proceedings for an order under section 16 (order for delivery up
of infringing goods, mate rial or articles), and
(b) proceedings for an order under section 19 (order as to disposal
of infringing goods, ma terial or articles).”
(3) In section 52(3)(a) (power to provide fo r the application of certain provisions in
relation to a European Union trade ma rk) for sub-paragrap h (i) substitute—
“(i) sections 21 to 21F (unjustified threats);”.
(4) In section 54(3) (power to provide for the application of certain provisions in
relation to an international trade mark  (UK)) for paragraph (a) substitute—
“(a) sections 21 to 21F (unjustified threats);”.
3 European Union trade marks
(1) Regulation 6 of the Community Trade Mark Regulations 2006 (S.I. 2006/1027)
(unjustified threats of infringement proceedings) is amended as follows.
(2) In paragraph (1), for “section 21” substitute “secti ons 21 to 21D and section
21F”.
(3) After paragraph (1) insert—
“(1A) In the application of sections 21  and 21B in relation to a European
Union trade mark, references to a registered trade mark are to betreated as references to a European Union trade mark in respect ofwhich an application has been publis hed in accordance with Article 39
of the European Union Trade Mark Regulation.
(1B) In the application of section 21C in  relation to a European Union trade
mark in a case where the threat of  infringement proceedings is madeIntellectual Property (Unjus tified Threats) Act 2017 (c. 14) 9
after an application has been publis hed (but before registration) the
reference in section 21C(2) to “the registered trade mark” is to be treated
as a reference to the European Union trade mark registered in
pursuance of that application.”
(4) For paragraph (2) substitute—
“(2) In the application of sections 21 and 21B in relation to an international
trade mark (EC), references to a regi stered trade mark are to be treated
as references to an international trade mark (EC) in respect of whichparticulars of an international re gistration designating the European
Union have been published in acco rdance with Article 152 of the
European Union Trade Mark Regulation.
(3) In the application of section 21C in  relation to an international trade
mark (EC) in a case where the thre at of infringement proceedings is
made after particulars have been pub lished (but before registration) the
reference in section 21C(2) to “the registered trade mark” is to be treatedas a reference to the internationa l trade mark (EC) registered in
pursuance of those particulars.”
(5) For the heading substitute “Unjustified threats”.
Registered designs, design right and Community design
4 Registered designs
(1) The Registered Designs Act 1949 is amended as follows.
(2) For the heading before sections 24A to 28 substitute—
“Legal proceedings: general”.
(3) For section 26 (remedy for unjustifie d threats of infringement proceedings)
substitute—
“Unjustified threats
26 Threats of infringement proceedings
(1) A communication contains a “threat of infringement proceedings” if a
reasonable person in the position of a recipient would understand from
the communication that—
(a) a registered design exists, and
(b) a person intends to bring proceedings (whether in a court in the
United Kingdom or elsewhere) against another person for
infringement of the right in  the registered design by—
(i) an act done in the United Kingdom, or
(ii) an act which, if done, would be done in the United
Kingdom.
(2) References in this section and in se ction 26C to a “recipient” include, in
the case of a communication directed to the public or a section of thepublic, references to a person to whom the communication is directed.Intellectual Property (Unj ustified Threats) Act 2017 (c. 14) 10
26A Actionable threats
(1) Subject to subsections (2) to (5),  a threat of infringement proceedings
made by any person is actionable  by any person aggrieved by the
threat.
(2) A threat of infringement proc eedings is not actionable if the
infringement is alleged to consist of—
(a) making a product for disposal, or
(b) importing a product for disposal.
(3) A threat of infringement proc eedings is not actionable if the
infringement is alleged to consist of an act which, if done, would
constitute an infringement of a kind mentioned in subsection (2)(a) or
(b).
(4) A threat of infringement proceedings is not actionable if the threat—
(a) is made to a person who has done, or intends to do, an act
mentioned in subsection (2)(a) or (b) in relation to a product,and
(b) is a threat of proceedings for an  infringement alleged to consist
of doing anything else in relation to that product.
(5) A threat of infringement proceedings which is not an express threat is
not actionable if it is contai ned in a permitted communication.
(6) In sections 26C and 26D an “actionable threat” means a threat of
infringement proceedings that is ac tionable in accordance with this
section.
26B Permitted communications
(1) For the purposes of section 26A(5), a communication containing a
threat of infringement proceedings is a “permitted communication”if—
(a) the communication, so far as it contains information that relates
to the threat, is made for a permitted purpose;
(b) all of the information that rela tes to the threat is information
that—
(i) is necessary for that purpose (see subsection (5)(a) to (c)
for some examples of necessary information), and
(ii) the person making th e communication reasonably
believes is true.
(2) Each of the following is  a “permitted purpose”—
(a) giving notice that a re gistered design exists;
(b) discovering whether, or by whom, the right in a registered
design has been infringed by an act mentioned in section26A(2)(a) or (b);
(c) giving notice that a person has a right in or under a registered
design, where anothe r person’s awareness of the right is
relevant to any proceedings that may be brought in respect ofthe registered design.
(3) The court may, having regard to th e nature of the purposes listed in
subsection (2)(a) to (c), treat any other purpose as a “permitted
purpose” if it considers that it is in the interests of justice to do so.Intellectual Property (Unjus tified Threats) Act 2017 (c. 14) 11
(4) But the following may not be treated as a “permitted purpose”—
(a) requesting a person to cease doing, for commercial purposes,
anything in relation to a product in which a design is
incorporated or to which it is applied,
(b) requesting a person to deliver up or destroy a product in which
a design is incorporated or to which it is applied, or
(c) requesting a person to give an undertaking relating to a product
in which a design is incorporat ed or to which it is applied.
(5) If any of the following informatio n is included in a communication
made for a permitted purpose, it is information that is “necessary for
that purpose” (see subsection (1)(b)(i))—
(a) a statement that a right in a registered design exists and is in
force or that an application for registration of a design has been
made;
(b) details of the registered design, or of a right in or under the right
in the registered design, which—
(i) are accurate in all material respects, and
(ii) are not misleading in any material respect; and
(c) information enabling the identifi cation of the products in which
the registered design is allegedly incorporated or to which theregistered design is allegedly applied.
26C Remedies and defences
(1) Proceedings in respect of an actionable threat may be brought against
the person who made the threat for—
(a) a declaration that the threat is unjustified;
(b) an injunction against the continuance of the threat;
(c) damages in respect of any lo ss sustained by the aggrieved
person by reason of the threat.
(2) It is a defence for the person who made the threat to show that the act
in respect of which proceedings were threatened constitutes (or if donewould constitute) an infringement of the right in the registered design.
(3) It is a defence for the person  who made the threat to show—
(a) that, despite having taken reasonable steps, the person has not
identified anyone who has done an act mentioned in section26A(2)(a) or (b) in relation to the product which is the subject of
the threat, and
(b) that the person notified the reci pient, before or at the time of
making the threat, of the steps taken.
26D Professional advisers
(1) Proceedings in respect of an ac tionable threat may not be brought
against a professional adviser (or any person vicariously liable for theactions of that professional adviser) if the conditions in subsection (3)are met.
(2) In this section “professional advise r” means a person who, in relation
to the making of the communication containing the threat—
(a) is acting in a professional capa city in providing legal services or
the services of a trade mark atto rney or a patent attorney, andIntellectual Property (Unj ustified Threats) Act 2017 (c. 14) 12
(b) is regulated in the provision of legal services, or the services of
a trade mark attorney or a patent attorney, by one or more
regulatory bodies (whether through membership of aregulatory body, the issue of a lic ence to practise or any other
means).
(3) The conditions are that—
(a) in making the communication th e professional adviser is acting
on the instructions of another person, and
(b) when the communication is made the professional adviser
identifies the person on whose in structions the adviser is acting.
(4) This section does not affect an y liability of the person on whose
instructions the professional adviser is acting.
(5) It is for a person asserting that subsection (1) appl ies to prove (if
required) that at the material time—
(a) the person concerned was acting as a professional adviser, and
(b) the conditions in subsection (3) were met.
26E Supplementary: pending registration
(1) In sections 26 and 26B references to a registered design include
references to a design in respect of which an application for registrationhas been made under section 3.
(2) Where the threat of infringement proceedings is made after an
application for registration has been made (but before registration) the
reference in section 26C(2) to “the re gistered design” is to be treated as
a reference to the design registered  in pursuance of that application.
26F Supplementary: proceedings for delivery up etc.
In section 26(1)(b) the reference to proceedings for infringement of the
right in a registered design  includes a reference to—
(a) proceedings for an order unde r section 24C (order for delivery
up), and
(b) proceedings for an order under section 24D (order as to disposal
of infringing articles).”
(4) Before section 27 insert—
“Meaning of “the court” and appeals”.
(5) In section 45 (application to Scotland) after subsec tion (1) insert—
“(1A) In the application of section 26C(1)(a) (remedy for unjustified threat of
infringement proceedings) to Scotland, “declaration” means
“declarator”.”
5 Design right
(1) Part 3 of the Copyright, Designs an d Patents Act 1988 (design right) is
amended as follows.
(2) For section 253 (remedy for unjustifie d threats of infringement proceedings),Intellectual Property (Unjus tified Threats) Act 2017 (c. 14) 13
and the heading immediately before that section, substitute—
“Unjustified threats
253 Threats of infringement proceedings
(1) A communication contains a “threat of infringement proceedings” if a
reasonable person in the position of a recipient would understand from
the communication that—
(a) design right subsists in a design, and
(b) a person intends to bring proceedings (whether in a court in the
United Kingdom or elsewhere) against another person for
infringement of the design right by—
(i) an act done in the United Kingdom, or
(ii) an act which, if done, would be done in the United
Kingdom.
(2) References in this section and in section 253C to a “recipient” include,
in the case of a communication directed  to the public or a section of the
public, references to a person to whom the communication is directed.
253A Actionable threats
(1) Subject to subsections (2) to (5),  a threat of infringement proceedings
made by any person is actionable  by any person aggrieved by the
threat.
(2) A threat of infringement proc eedings is not actionable if the
infringement is alleged to consist of—
(a) making an article for disposal, or
(b) importing an article for disposal.
(3) A threat of infringement proc eedings is not actionable if the
infringement is alleged to consist of an act which, if done, would
constitute an infringement of a kind mentioned in subsection (2)(a) or(b).
(4) A threat of infringement proceedings is not actionable if the threat—
(a) is made to a person who has done, or intends to do, an act
mentioned in subsection (2)(a) or (b) in relation  to an article, and
(b) is a threat of proceedings for an  infringement alleged to consist
of doing anything else in relation to that article.
(5) A threat of infringement proceedings which is not an express threat is
not actionable if it is contai ned in a permitted communication.
(6) In sections 253C and 253D an “actionable threat” means a threat of
infringement proceedings that is ac tionable in accordance with this
section.
253B Permitted communications
(1) For the purposes of section 253A(5), a communication containing a
threat of infringement proceedings is a “permitted communication”if—
(a) the communication, so far as it contains information that relates
to the threat, is made for a permitted purpose;Intellectual Property (Unj ustified Threats) Act 2017 (c. 14) 14
(b) all of the information that rela tes to the threat is information
that—
(i) is necessary for that purpose (see subsection (5)(a) to (c)
for some examples of necessary information), and
(ii) the person making th e communication reasonably
believes is true.
(2) Each of the following is  a “permitted purpose”—
(a) giving notice that design right subsists in a design;
(b) discovering whether, or by wh om, design right in a design has
been infringed by an act mentio ned in section 253A(2)(a) or (b);
(c) giving notice that a person has a right in or under the design
right in a design, where another person’s awareness of the right
is relevant to any proceedings that may be brought in respect of
the design right in the design.
(3) The court may, having regard to th e nature of the purposes listed in
subsection (2)(a) to (c), treat any other purpose as a “permitted
purpose” if it considers that it is in the interests of justice to do so.
(4) But the following may not be treated as a “permitted purpose”—
(a) requesting a person to cease doing, for commercial purposes,
anything in relation to an article made to a design,
(b) requesting a person to deliver up or destroy an article made to
a design, or
(c) requesting a person to give an undertaking relating to an article
made to a design.
(5) If any of the following informatio n is included in a communication
made for a permitted purpose, it is information that is “necessary for
that purpose” (see subsection (1)(b)(i))—
(a) a statement that design right subsists in a design;
(b) details of the design, or of a ri ght in or under the design right in
the design, which—
(i) are accurate in all material respects, and
(ii) are not misleading in any material respect; and
(c) information enabling the identification of articles that are
alleged to be infringi ng articles in relation to the design.
253C Remedies and defences
(1) Proceedings in respect of an actionable threat may be brought against
the person who made the threat for—
(a) a declaration that the threat is unjustified;
(b) an injunction against the continuance of the threat;
(c) damages in respect of any lo ss sustained by the aggrieved
person by reason of the threat.
(2) It is a defence for the person who made the threat to show that the act
in respect of which proceedings were threatened constitutes (or if donewould constitute) an infringement of design right.
(3) It is a defence for the person  who made the threat to show—
(a) that, despite having taken reasonable steps, the person has not
identified anyone who has done an act mentioned in sectionIntellectual Property (Unjus tified Threats) Act 2017 (c. 14) 15
253A(2)(a) or (b) in relation to the article which is the subject of
the threat, and
(b) that the person notified the reci pient, before or at the time of
making the threat, of the steps taken.
253D Professional advisers
(1) Proceedings in respect of an ac tionable threat may not be brought
against a professional adviser (or any person vicariously liable for the
actions of that professional adviser) if the conditions in subsection (3)are met.
(2) In this section “professional advise r” means a person who, in relation
to the making of the communication containing the threat—
(a) is acting in a professional capa city in providing legal services or
the services of a trade mark atto rney or a patent attorney, and
(b) is regulated in the provision of legal services, or the services of
a trade mark attorney or a patent attorney, by one or moreregulatory bodies (whether through membership of aregulatory body, the issue of a lic ence to practise or any other
means).
(3) The conditions are that—
(a) in making the communication th e professional adviser is acting
on the instructions of another person, and
(b) when the communication is made the professional adviser
identifies the person on whose in structions the adviser is acting.
(4) This section does not affect an y liability of the person on whose
instructions the professional adviser is acting.
(5) It is for a person asserting that subsection (1) appl ies to prove (if
required) that at the material time—
(a) the person concerned was acting as a professional adviser, and
(b) the conditions in subsection (3) were met.
253E Supplementary: proceedings for delivery up etc.
In section 253(1)(b) the reference to proceedings for infringement of
design right includes a reference to—
(a) proceedings for an order unde r section 230 (order for delivery
up), and
(b) proceedings for an order under section 231 (order as to disposal
of infringing articles).”
(3) Before section 254 insert—
“Licensee under licence of right not to cl aim connection with design right owner”.
(4) In section 262 (adaptation of expressions in relation to Scotland) at the
appropriate place insert—
““declaration” means “declarator”;”.Intellectual Property (Unj ustified Threats) Act 2017 (c. 14) 16
6 Community design
(1) The Community Design Regulations 2005 (S.I. 2005/2339) are amended as
follows.
(2) For regulation 2 (remed y for unjustified threats of  infringement proceedings)
substitute—
“2 Unjustified threats: threats of infringement proceedings
(1) A communication contains a “threat of infringement proceedings” if a
reasonable person in the position of a recipient would understand from
the communication that—
(a) a Community design exists, and
(b) a person intends to bring proceedings (whether in a court in the
United Kingdom or elsewhere) against another person for
infringement of the Community design by—
(i) an act done in the United Kingdom, or
(ii) an act which, if done, would be done in the United
Kingdom.
(2) References in this regulation and in regulation 2C to a “recipient”
include, in the case of a communic ation directed to the public or a
section of the public, references to a person to whom thecommunication is directed.
2A Unjustified threats:  actionable threats
(1) Subject to paragraphs (2) to (5), a threat of  infringement proceedings
made by any person is actionable  by any person aggrieved by the
threat.
(2) A threat of infringement proc eedings is not actionable if the
infringement is alleged to consist of—
(a) making an article for disposal, or
(b) importing an article for disposal.
(3) A threat of infringement proc eedings is not actionable if the
infringement is alleged to consist of an act which, if done, would
constitute an infringement of a kind mentioned in paragraph (2)(a) or(b).
(4) A threat of infringement proceedings is not actionable if the threat—
(a) is made to a person who has done, or intends to do, an act
mentioned in paragraph (2)(a) or (b) in relation to an article, and
(b) is a threat of proceedings for an  infringement alleged to consist
of doing anything else in relation to that article.
(5) A threat of infringement proceedings which is not an express threat is
not actionable if it is contai ned in a permitted communication.
(6) In regulations 2C and 2D an “actionable threat” means a threat of
infringement proceedings that is ac tionable in accordance with this
regulation.Intellectual Property (Unjus tified Threats) Act 2017 (c. 14) 17
2B Unjustified threats: permitted communications
(1) For the purposes of regulation 2A(5), a communication containing a
threat of infringement proceedings is a “permitted communication”
if—
(a) the communication, so far as it contains information that relates
to the threat, is made for a permitted purpose;
(b) all of the information that rela tes to the threat is information
that—
(i) is necessary for that purpos e (see paragraph (5)(a) to (c)
for some examples of necessary information), and
(ii) the person making th e communication reasonably
believes is true.
(2) Each of the following is  a “permitted purpose”—
(a) giving notice that a Community design exists;
( b ) d i s c o v e r i n g  w h e t h e r ,  o r  b y  w h o m ,  a  C o m m u n i t y  d e s i g n  h a s
been infringed by an act mentione d in regulation 2A(2)(a) or (b);
(c) giving notice that a person has a right in or under a Community
design, where anothe r person’s awareness of the right is
relevant to any proceedings that may be brought in respect ofthe Community design.
(3) The court may, having regard to th e nature of the purposes listed in
paragraph (2)(a) to (c), treat an y other purpose as a “permitted
purpose” if it considers that it is in the interests of justice to do so.
(4) But the following may not be treated as a “permitted purpose”—
(a) requesting a person to cease doing, for commercial purposes,
anything in relation to an article made to a design, in which adesign is incorporated or to which it is applied,
(b) requesting a person to deliver up or destroy an article made to
a design, in which a design is incorporated or to which it is
applied, or
(c) requesting a person to give an undertaking relating to an article
made to a design, in which a desi gn is incorporated or to which
it is applied.
(5) If any of the following informatio n is included in a communication
made for a permitted purpose, it is information that is “necessary for
that purpose” (see paragraph (1)(b)(i))—
(a) a statement—
(i) that a design is a register ed Community design and the
registration is in force,
(ii) that an application for a registered Community design
has been made, or
(iii) that a design is prot ected as an unregistered
Community design;
(b) details of the Community design , or of a right in or under the
Community design, which—
(i) are accurate in all material respects, and
(ii) are not misleading in any material respect; and
(c) information enabling the identi fication of the article that is
alleged to be infringing an arti cle in relation to the design.Intellectual Property (Unj ustified Threats) Act 2017 (c. 14) 18
2C Unjustified threats: remedies and defences
(1) Proceedings in respect of an actionable threat may be brought against
the person who made the threat for—
(a) a declaration that the threat is unjustified;
(b) an injunction against the continuance of the threat;
(c) damages in respect of any lo ss sustained by the aggrieved
person by reason of the threat.
(2) It is a defence for the person who made the threat to show that the act
in respect of which proceedings were threatened constitutes (or if done
would constitute) an infringeme nt of the Community design.
(3) It is a defence for the person  who made the threat to show—
(a) that, despite having taken reasonable steps, the person has not
identified anyone who has done an act mentioned in regulation2A(2)(a) or (b) in relation to the article which is the subject of the
threat, and
(b) that the person notified the reci pient, before or at the time of
making the threat, of the steps taken.
2D Unjustified threats: professional advisers
(1) Proceedings in respect of an ac tionable threat may not be brought
against a professional adviser (or any person vicariously liable for theactions of that professional adviser) if the conditions in paragraph (3)are met.
(2) In this section “professional advise r” means a person who, in relation
to the making of the communication containing the threat—
(a) is acting in a professional capa city in providing legal services or
the services of a trade mark atto rney or a patent attorney, and
(b) is regulated in the provision of legal services, or the services of
a trade mark attorney or a patent attorney, by one or moreregulatory bodies (whether through membership of aregulatory body, the issue of a lic ence to practise or any other
means).
(3) The conditions are that—
(a) in making the communication th e professional adviser is acting
on the instructions of another person, and
(b) when the communication is made the professional adviser
identifies the person on whose in structions the adviser is acting.
(4) This section does not affect an y liability of the person on whose
instructions the professional adviser is acting.
(5) It is for a person asserting that  paragraph (1) applies to prove (if
required) that at the material time—
(a) the person concerned was acting as a professional adviser, and
(b) the conditions in paragraph (3) were met.
2E Unjustified threats: supplementary: pending registration
(1) In the application of regulations 2 and 2B in relation to a registered
Community design, references to  a Community design include
references to a Community design in respect of which an applicationIntellectual Property (Unjus tified Threats) Act 2017 (c. 14) 19
for registration has been filed in accordance with Article 35 of the
Community Design Regulation.
(2) Where the threat of infringement proceedings is made after an
application for registration has been filed (but before registration) the
reference in regulation 2C(2) to “the Community design” is to be
treated as a reference to the design  registered in pursuance of that
application.
2F Unjustified threats: supplementary: proceedings for delivery up etc.
In regulation 2(1)(b) th e reference to proceedings for infringement of
the Community design includes a reference to—
(a) proceedings for an order under regulation 1B (order for
delivery up), and
(b) proceedings for an order under regulation 1C (order as to
disposal of infringing articles).”
(3) In regulation 5A(1) (application to Sc otland) at the appropriate place insert—
““declaration” means “declarator”;”.
Final provisions
7E x t e n t
(1) This Act extends to England and Wa les, Scotland and Northern Ireland.
(2) The following provisions also extend  to the Isle of Man, subject to such
modifications as Her Majesty ma y by Order in Council provide—
(a) section 1(1), (2) and (4) to (7);
(b) section 2;
(c) section 4;
(d) this subsection;
(e) section 8 (so far as relating to the commencement of provisions which
extend to the Isle of Man);
(f) section 9.
(3) Her Majesty may by Order in Counci l provide for the amendments made by
section 1(3) and (8) of this Act to the Pa tents Act 1977 to extend, with or without
modifications, to the Isle of Man.
(4) The power to make an Order in Council under section 255(2) of the Copyright,
Designs and Patents Act 1988 (extension of certain provisions to the Isle of
Man, the Channel Islands or other terri tories, with or wi thout modifications)
may be exercised in relation to any amendment made by section 5 above (and
in section 255(4) and (5) of that Act the references to Part 3 include referencesto the provisions substituted or inserted by the amendments made by section5).
8 Commencement
(1) This section, section 7(1) to (3) and section 9 come into force on the day on
which this Act is passed.Intellectual Property (Unj ustified Threats) Act 2017 (c. 14) 20
(2) The other provisions of this Act come into force on such day or days as the
Secretary of State may by regulations made by statutory instrument appoint.
(3) Regulations under subsection (2) may—
(a) appoint different days for different purposes;
(b) make transitional, transitory or saving provision.
9 Short title
This Act may be cited as the Intellectua l Property (Unjustified Threats) Act
2017.
? Crown copyright 2017
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