In 2023, a London cyclist, who posts footage to a YouTube Channel under the name of ‘Chapona Bicyclette’ showing vehicles making dangerous manoeuvres around or near cyclists, uploaded footage of a van overtaking the cyclist in an allegedly dangerous manner.

The cyclist also sent the footage to the company that owned the van (Cornices Centre), with an expectation of an apology and assurance that the driver of the van would receive an appropriate reprimand.

Instead, the cyclist received an email from Cornices Centre alleging trade mark infringement!

This claim was based on the company’s trade mark being visible in the video made public on the YouTube platform and that this trade mark had been used ‘without permission’.

Cornices Centre threatened the cyclist with legal action for trade mark infringement unless the video was removed from the Chapona Bicyclette YouTube channel.

What is Trade Mark Infringement?

Section 10 of the UK Trade Marks Act 1994 sets out the meaning of trade mark infringement.

This occurs when a trade mark that is identical or similar to a registered trade mark is used, without consent, in the course of trade, in relation to identical or similar goods and/or services to those covered by the registered trade mark.

The Act defines ‘use in the course of trade’ as being, amongst others, using the trade mark on packaging, selling goods bearing the trade mark and using the trade mark as a company name.

Has Trade Mark Infringement Occurred Here?

Cornices Centre have protected their branding through trade mark registration, but because the cyclist had not used Cornices Centre’s trade marks ‘in the course of trade’ by taking a video of the near-accident and posting it to YouTube, it is clear that an allegation of trade mark infringement is without any foundation in this instance.

In a further development, the incident was picked up by barrister Daniel ShenSmith on his YouTube channel (BlackBeltBarrister).

He provided opinion on the trade mark infringement claim, stating, “whilst they are quite correct to say that the YouTube video does incorporate the trade mark in video titles and descriptions, they say it is improperly used, which is not really the case because he’s not, in so far as I can see, marketing any goods or services“.

Having published these comments on YouTube, it was then Mr ShenSmith’s turn to receive a letter on behalf of Cornices Centre, which Mr ShenSmith claims made ‘veiled threats’ concerning his alleged ‘misconduct’ and with a demand that his video be taken down.

Mr ShenSmith has refused to take the video down because he claims there is no legal basis for him to do so.

Meanwhile, the driver of the van has since been prosecuted by the police for dangerous driving and the claim of trade mark infringement has been dropped by Cornices Centre.

You would think that would be the end of the matter, but Cornices Centre did not give up. It is claimed that further threats of legal action were issued against the cyclist for alleged harassment, libel, a data protection infringement and the unauthorised publication of their name.

Unjustified Threats

Being on the receiving end of a claim of trade mark infringement is very concerning for any individual or party, and particularly in instances where the receiver is completely unaware they had been doing anything considered to be an infringement, or alternatively, where they have done nothing wrong at all.

In order to protect a party that is on the receiving end of an infringement threat, a recourse of action against the accuser is possible under certain conditions.

Legislation in the UK under both the UK Trade Marks Act 1994 and Copyright, Designs and Patents Act 1988 provides protection against ‘groundless threats’ of infringement proceedings made by any legal entity and relates to unjustified threats made by the holder of a patent, registered trade mark, unregistered design right or registered design.

The purpose of the legislation is to allow the receiver (claimant) to seek damages and obtain an injunction to prevent further threats, where the threats made are deemed to be unjustifiable such that what is being alleged is entirely without any legal merit and considered to be a hopeless case.

In order for the communication to be considered a ‘threat’ it must be considered that a reasonable person in the position of a receiver (of the threat) would naturally understand from the communication that:

• An intellectual property right (“IPR”) exists (patent, registered trade mark, unregistered design right and/or registered design); and,
• It is intended that proceedings will be brought for infringement for an act that took place in the UK (albeit the proceedings can be heard in a court in the United Kingdom or elsewhere).

Going back to our story above, the cyclist would have had a sufficient basis to take legal action against Cornices Centre because their trade mark was not being used in the course of of trade and, therefore, they had made a threat of trade mark infringement deemed to be ‘unjustified’.

Unjustified Threat Exclusions

Certain sections of the relevant Acts permit an accuser to make threats of infringement with impunity, provided it is made clear that the ‘acts’ of infringement are any of the following specific acts:

Trade marks:

• Applying, or causing another person to apply, a sign to goods or their packaging
• Importing goods to which, or to the packaging of which, a sign has been applied, and/or
• Supplying services under a sign.

Patents:

• Manufacturing or importing a product protected by a patent, and/or
• Using a patented process

Permitted Communications

IPR rights holders might understandably be concerned about this legislation in so far as being wary of alleging infringement claims only for those claims to be deemed unjustified and thereby enabling the receiver to ‘turn the tables’ and threaten to counter-sue.

Legislation provides for certain ‘permitted communications’ whereby communications can be made from one party to another without the fear that a claim for an unjustified threat might be made in response.

Such permitted communications include giving notice that a registered trade mark, granted patent or registered design exists and where the sender is writing expressly for the purpose of seeking information surrounding the suspected infringement.

It is important that the information provided in a permitted communication should be believed in good faith by the sender to be true.

Permitted communications should not request the recipient to cease using the IPR (in the course of trade) or request the recipient to deliver up or destroy goods, or to request the recipient provide an undertaking relating to the use of the IPR. In other words, it should stop short of any infringement demand of the receiver, other than to provide requested information.

If such demands are made then the communication could be construed to fall outside the parameters of a permitted communication, enabling the receiver to consider whether it can retaliate on the basis that an unjustified threat (or threats) has been made.

In addition, if a letter is addressed to the incorrect entity then this can trigger an unjustified threat claim because that entity has no involvement in the issue. It is therefore essential to address the letter to the offending entity and all due diligence needs to be carried before the issue of any letter.

Can You Defend an Unjustified Threat Claim?

Where a counterclaim of an unjustified threat has been made by the receiving party, the sender party can nullify this is if they can show:

• That the threat was indeed justified (i.e. an infringement has occurred); and/or,
• That reasonable steps were made to identify the alleged infringer prior to making the threat and the receiver had been notified of those steps.

What those ‘reasonable steps’ are need to be considered on a case-by-case basis.

Professional Advisers

Professional advisers, such as patent and trade mark attorneys, are protected from claims of unjustified threats of infringement being made against them, so long as:

• They are acting in a professional capacity in providing legal services
• They are regulated by one or more regulatory bodies
• They are acting on the instructions of another and in the communication they identify the person on whose instructions they are acting.

Has Another Party Infringed Your IPR, or Have You Been Threatened With Infringement?

If you believe your intellectual property rights are being infringed or if you have received a communication alleging that you have infringed another party’s intellectual property, it is crucial to obtain specialist legal advice.

SH&P are a fully regulated firm and have decades of experience in this field. Get in touch with us now for a FREE consultation and let us help you.