What has happened?

• The interplay between human rights and IP rights occasionally crops up in litigation. In a recent decision, the High Court of England and Wales considered the interplay between the unjustified threats provisions in UK trade mark law and the right to freedom of expression in Article 10 of the Human Rights Act 1998 (HRA). 

• In this case, the court concluded that an interim injunction could be granted to restrain the respondent from making threats of trade mark infringement against the applicant's distributors and retailers despite the fact that this would impact the respondent's right to freedom of expression. 

The case illustrates the importance of having potential human rights issues in mind when litigating.

What are the unjustified threats provisions?

The unjustified threats provisions protect businesses from groundless threats of infringement proceedings. While a person can threaten proceedings for trade mark infringement against those who import and apply trade marks to goods without impunity, the same is not true where the threat is made against those further down the supply chain. 

If the threat turns out to be unjustified (eg because there is no infringement) then any person aggrieved by the threat can claim damages for any losses they have suffered as a result of the threat and/or an injunction to restrain the threat. An interim injunction can also be sought to restrain the making of threats pending a trial on infringement. 

The aim of the provisions is to discourage trade mark owners from making speculative claims of trade mark infringement against those down the supply chain who are not generally in a good position to evaluate the strength of those claims. 

Why was Article 10 engaged?

Article 10 of the HRA provides a right to freedom of expression including the freedom to impart information. The respondent argued that the grant of an interim injunction to restrain the making of threats against the applicant's distributors and retailers would impinge on its Article 10 rights.

This is important because section 12 of the HRA provides that no interim relief interfering with a person's Article 10 rights is to be granted "unless the court is satisfied that the applicant is likely to establish [at trial] that publication should not be allowed." 

However, the "likely to establish" test has been given a flexible interpretation in certain cases such as Cream Holdings - and it was in this case, too. The court held that the grant of an interim injunction would only affect the respondent's Article 10 rights to a very limited extent because the unjustified threats provisions automatically curtail those rights. 

The court therefore held that it should not require the applicant for the injunction to establish that it is more likely than not to succeed in obtaining an injunction at trial. Rather, the court need only be satisfied that the applicant’s prospects of success at trial are sufficiently favourable to justify an order being made.

What did the court decide?

Here, the court decided that the applicant for the interim injunction had a sufficiently favourable prospect of success at trial to justify the injunction being granted. In particular, it had shown that there was a serious issue to be tried (but not necessarily a likelihood of success) with respect to the validity of the three trade mark registrations the respondent had been relying on when making the threats of trade mark infringement. The section 12 test was therefore satisfied, as were the other criteria for the grant of an interim injunction (as set out in the American Cyanamid case).

What does this mean for you?

The case shows how human rights issues can sometimes crop up in IP litigation. When applying for an interim injunction that might restrain a person's Article 10 rights, parties should always consider the likely to establish test in section 12.

More generally, parties should always keep human rights issues in the back of their minds when conducting IP litigation. IP rights are property rights that are protected under the ECHR and their enforcement can limit other party's rights. For the most part, human rights-type arguments don't impact substantive trade mark law since the courts generally conclude that those human rights have been intentionally curtailed by parliament. However, they can often impact procedural issues, including a party's right to a fair hearing or appeal.