What's the risk of filing a takedown notice?
A legal action for unjustified threats is a serious risk that trade mark owners run when making allegations of infringement, including by issuing takedown notices via online platforms such as marketplaces. As a recent decision showed, the risk of unjustified threats should not be taken lightly.
The decision came in a dispute over knitting needles. The case dates back to November 2015, when Indian company KnitPro issued takedown notices to Amazon UK regarding wooden knitting needles sold by Crafts. KnitPro owns two EU trade marks and, post-Brexit, corresponding UK marks. One of the EU marks is subject to ongoing invalidity proceedings at EUIPO.
Crafts claims that the alleged threats caused it substantial damage and Amazon will not re-list its products unless the notices are withdrawn or the court intervenes. In December 2020, it issued proceedings in the IPEC for unjustified threats. KnitPro responded by challenging jurisdiction and arguing for a stay pending the outcome of the EUIPO proceedings.
The judge, Deputy High Court Judge Ian Karet, rejected all these challenges, saying any breach in serving the documents was not serious or significant and, even if it was, it occurred by accident. Moreover, he found that there had not been a material non-disclosure as alleged by KnitPro.
The judge also declined to stay the UK proceedings, saying that Articles 124 and 132 of the EU Trade Mark Regulation (which concern stays) do not cover UK threats actions and it is not yet clear whether the EUIPO proceedings will have an effect on or be in conflict with the UK case:
“It is thus too early to say whether a stay would further the overriding objective. It is possible that matters will develop such that there are two courts with jurisdiction to hear concurrent matters, but the proceedings have not yet reached that stage.”
The decision means the threats action can proceed - whether KnitPro's actions are found to be unjustified threats remains to be seen. It is however a reminder to all IP owners that issuing takedown notices can have serious consequences, even several years later, that may result in costly and distracting litigation.
It is always advisable to seek appropriate legal advice in the relevant jurisdiction before issuing takedown notices in order to minimise such risks.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - firstname.lastname@example.org #threats #takedown #dispute #litigation #IP #trademarks #IP #intellectualproperty