Intellectual Property (Unjustified Threats) Bill [Lords]

John Bercow Excerpts

3rd reading: House of Commons & Report stage: House of Commons
Tuesday 21st March 2017 Commons Chamber

[Bill Esterson]

I beg to move amendment 1, page 2, line 15, after “do,” insert “or claims to do,”.

This amendment deals with people or companies who hold themselves out as the primary infringer: ie, they claim to be the manufacturer or importer of a product (and therefore can be written to freely) when, in fact, they are not. A definition is provided in amendment 3.

[Mr Speaker]

With this it will be convenient to discuss the following:

Amendment 2, page 2, line 19, at end insert—

“(4A) A threat of infringement proceedings is not actionable if the threat—

(a) is made to a person mentioned in subsection (4), and

(b) relates to—

(i) potential future acts of infringement, or

(ii) other acts of infringement

which are fundamentally similar to the current alleged act of infringement.”

This amendment would allow communications from the rights holder to the primary infringer to also refer to secondary infringing acts (by the primary infringer), without it constituting a threat.

Amendment 3, page 2, line 24, at end insert—

“(7) In subsection (4)(a) “claims to do an act” means the person makes an explicit claim in public that they are the manufacturer or importer of the product or process.”

This amendment provides a definition of “claims to do” in amendment 1.

[Bill Esterson]

Amendments 1 and 3 are related to primary infringers and those who claim “to do”. Amendment 1 addresses the concern about the impact on those who claim to make a product and the potential for action to be taken against them. Amendment 3 defines “claims to do”.

We are dealing here with communication and threats. As the Bill stands, the onus is on a rights holder not to communicate with a party that claims to be a primary infringer of rights. The example that springs to mind is that of an own-label brand in a supermarket. Under the Bill, a manufacturer who believes that a product contravenes their rights may not communicate with the supermarket unless they are confident that there is no other way of finding out who the manufacturer really is. The problem is that smaller manufacturers wanting to challenge the bigger players may not have the expertise or access to expertise needed to comply with the provisions of the Bill. They do not have the staff, time or money to engage legal services or to search for the true identity of the manufacturer. The Minister said in Committee that if action were taken against a rights holder, they would be able to defend themselves in court. Now, that is entirely accurate in legal terms, but the problem is that smaller organisations lack the resources to be able to do so.