Unjustified threats and online takedowns

An IP right can be a powerful and frightening thing, says Albright IP patent attorney Frederick Noble.


Patents, trade marks, and registered designs can be used to exclude all others but the owner from using the invention, mark, or design.

But IP rights can be abused. How many patents are actually valid? It’s hard to say, but it certainly isn’t all of them. And what is actually covered? There is very often room for argument. IP owners have been known to exploit this uncertainty to try to spread fear and discourage legitimate competition.

Because of this, the law provides a mechanism to prevent “unjustified threats of infringement proceedings”. In particular, the provisions target IP owners who address their complaint not to the originator (the manufacturer or the importer into the jurisdiction) of the said-to-be infringing goods, but to the originator’s customers – retailers, for example. Thus, they seek to attack the manufacturer indirectly by frightening off their customers. The unjustified threats law recognises this as wrong and allows the manufacturer to take action to prevent it and recover damages. Rightly so. But the rules on unjustified threats do have the potential to catch out IP owners who are not necessarily consciously pursuing such a strategy.

Nowadays, a huge volume of online retail sales are made via “platform” sites like ebay and Amazon Marketplace. These sites list goods sold by thousands of different sellers. Inevitably, some of those listings will infringe on intellectual property rights. The platforms need to control this, and they all run “takedown” schemes whereby a report of IP infringement will generally lead to a listing being removed. This can often be a fast, effective, and cheap way for IP owners to get infringing listings removed but, if the right turns out to be invalid or the listing did not actually infringe, then they have made an unjustified threat and are potentially liable.

So, while takedown schemes are a good tool, be aware of the risks and ensure that you take advice before acting on online infringement.