Cassie Creations Ltd v Blackmore & Anor (Rev 1)

The statutory threat provisions require an objective assessment of whether a communication would convey to a reasonable recipient that intellectual-property rights will be enforced. A notice sent through an intermediary may constitute a threat even when addressed to the intermediary and framed as a request for investigation. Where the evidence leaves the issue genuinely arguable, it should proceed to trial rather than be determined summarily.

A person who personally makes and signs an infringement notice may be jointly liable with the company on whose behalf it is sent. Clear statutory wording cannot be expanded by reference to proposed legislative reform. Modest damages do not, without more, make an intellectual-property threats claim disproportionate or abusive.

The claimants marketed cake stands on eBay. The defendants sent eBay a notice under its Verified Rights Owner system alleging infringement of registered designs, following which eBay removed or de-listed the claimants’ products. The defendants’ solicitors later sent the claimants a letter concerning unregistered design rights.

The claimants sought summary judgment on aspects of their unjustified-threats claim. The defendants sought strike-out and summary judgment on the grounds that the communications were not threats, that the claims lacked a real prospect of success, that the proceedings were disproportionate or abusive, and that the first defendant was not personally liable.

1. Threats. Whether the eBay notice was a threat was an objective question. The relevant inquiry was whether it would be understood by an ordinary recipient in the claimant’s position as a threat of infringement proceedings. The fact that the notice was addressed to eBay did not prevent it from being a threat. The issue was genuinely arguable and required trial.
2. The letter concerning unregistered design rights was accepted to be a threat. The issue whether the threats were groundless also had to proceed to trial because the evidential position was incomplete.
3. Personal liability. The first defendant was jointly liable, if liability arose, for the eBay notice. He signed it, made the declarations, claimed ownership of the rights and supplied contact details. His involvement made the sending of the notice his own act. The claim that he authorised the later letter was weaker, but not so weak as to be struck out.
4. Statutory protection. Sections 26(2A) of the Registered Designs Act 1949 and 253(3) of the Copyright, Designs and Patents Act 1988 protected threats relating to alleged infringement consisting of making or importing. They did not extend to selling. Clear statutory wording could not be expanded by reference to proposed but unenacted reform. Cavity Trays Ltd v RMC Panel Products Ltd [1996] RPC 361 supported that conclusion.
5. Proportionality and abuse. The claims for declarations and injunctions were legitimate remedies. The proceedings were neither disproportionate nor an abuse of process. The defendants’ applications for strike-out and summary judgment were refused in material part, and the relevant issues were to proceed to trial.