Unjustified Threats Can Cost YOU!

Making unjustified threats of trade mark infringement can give rise to a cause of action AGAINST the maker of the threat. Nonetheless, a cyclist has received such a threat of legal proceedings. Here’s an explanation for GUIDANCE only!

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Everybody knows that if you make a threat against somebody else you might just get yourself into trouble but what if you make a legal threat against somebody that you really shouldn’t have been making in the first place we call those unjustified threats what many people don’t know is that if you make an

Unjustified legal threat against another person you yourself the maker of the unjustified legal threat might find yourself in a whole heap of legal trouble yourself with the person AG grieved or the company grieved being able to claim damages against you for losses sustained obtaining an injunction against you to refrain you from making

Further unjustified threats and a declaration that it was in fact an unjustified threat what I’m talking about is unjustified threats of trademark infringement in a nutshell this means you’re threatening someone else with infringing upon your trademark when they’re not this is exactly what happened in this case where this chap

Literally chap on a bicycl as as his YouTube channel is called in fact let’s go over there and subscribe now so uh you can get more of this content later on uh subscribe to me as well while you’re at it now it goes without saying that all of this video is for

Educational purposes only it is not legal advice to any of the parties involved but it is a guidance to anyone that might find themselves in the same situation and it’s done with all good intentions so that everybody can understand the law a little bit better and hopefully keep themselves out of

Trouble um so this chap uh Lally chap on a bike um uploads videos of his journeys on a bike routinely presumably to document his journeys uh save footage in case he gets injured so we can refer to it later and Heaven for fend uh anybody were to commit a road traffic offense

That he can report this then to the police all of which is perfectly legal of course because if you’re recording it for any one of those purposes it’s all perfectly fine this is out in a public place it’s not fixed surveillance and so on but we digress

So that’s exactly what happened in this case only he captured not only in the video itself the name of a company on the side of one of these luten tail lift van things which is more akin to a Lori but then he also labeled the video so

That he could find it later and it’s identifying what happened in the video so let’s take a quick look at the video let’s take a look at the threat that came along and let’s take a look at the law so we can all understand exactly what’s going on here so there are a

Couple of comments I’ll make about the video as we go along H you can see on the left hand side there is another cyclist up on the left there is a cycle Lane but it’s interspersed with these uh different areas where you can’t ride in it so presumably that’s why he’s riding

On the outer edge of this cycle Lane here so he’s riding literally on the edge of the line now this is the close quote unquote close pass here now just to be clear there is no defined close pass offense in law what it is is when another vehicle is driving without due

Care uh for other Road users and consideration for the road users and if they were to collide and it’s very close and so on it could amount to careless driving or even dangerous driving so in my view right off the bat not that we’re talking about this in this video but in

My view this is a close pass because I I even feel like I could reach out and touch the wing mirror of this um Ford Luton van driving driving past here so the problem comes as you can just about make out uh the logo on this first door

Of the van here but as it goes past a little bit further um quite clearly close past you can quite clearly see the name of the company on the side of the van with the phone number the website and so on which is why it’s then been

Labeled up as to uh what the vehicle was and where it was and the name of the company this company is obviously upset about it the fact that it’s on YouTube uh presumably it they feel that it’s going to damage their reputation people go might leave bad reviews and so on all

Of which they shouldn’t do because obviously doing that is is not going to be genuine because they won’t be a genuine customer unless of course they are a genuine customer but they probably not so let’s first of all take a quick look at the law when somebody has a

Trademark registered they are conferred with certain rights and essentially they have the exclusive rights in trademark to Market their products and services and indeed their company and so if any other company were to use a registered trademark to Market their goods and services they would be infringing this

Trademark and thus the proprietor of the registered mark would have a cause of action however the key part of all of that is infringing use is when you are using someone else’s trademark to Market goods or services this is the first part of the test for trademark infringement

Indeed this is set out very neatly in the very next section of the trademarks act section 10 which defines what infringement is it says a person infringes a registered trademark if he uses in the course of trade a sign which is identical to the mark in relation to

The goods or services which are identical with those for which it’s registered and then there are of course variations of infringement so there’s an identical sign with identical Goods an identical sign with similar Goods or a similar sign even with identical goods and so on the point is it must be used

In the course of business to Market goods or services so how then does that relate to this situation here well unless chap on a bike is somehow marketing goods or services using this company’s name then he’s not going to be infringing the trademark per the definition in the trademarks act because

If he’s not marketing goods or services he can’t be infringing the mark so now we move to the email threat and why that might land the company in more trouble than they had first anticipated so without reading this email in its entirity there are bits of it here that

Explain that the company is the owner of a registered trademark and what they are quite correct to say that the YouTube video does incorporate the trademark in video titles and descriptions and so on they do say that it’s improperly used which is not really the case because

He’s not in so far as I can see marketing any goods or services so I don’t agree with that they go on moreover the trademark is represented in a modified URL format this seems to be a strategy to evade detection by search algorithms I don’t really agree with that either it’s potentially an

Accusation of dishonesty which I don’t think is very well founded but I can understand understand why they might be upset that their van is now splattered across YouTube with what many people will consider to be bad driving they then reference a Google Search and various videos that pop up in response

To that search but then go on to say this unauthorized use is confusing our customers negatively impacting our brand reputation and potentially harming our sales and the exclusivity of our trademark now buried within that statement is I think with respect the real reason the real reason being in my

View is that it’s quite likely to negatively impact the brand reputation given that some people feel very strongly about drivers driving too close to cyclists in a manner that they feel dangerous but is it unauthorized use in my view no unless he’s marketing goods or services it’s not an authorized use

Is it confusing to customers well let’s think this through somebody might be genuinely searching for this company and land on this video are they likely to be confused used that this video is in some way directly connected with this company I very much doubt it because the video quite clearly shows exactly what’s

Happening it’s a cyclist riding along and the van Drives By is it potentially harming sales and exclusivity of the trademark I doubt it but it’s possible but in any event it still doesn’t amount to trademark infringement then of course it goes on to a request to immediately stop using the trademark refrain from

Using it and then references a sister’s website to embolden the threat it’s unclear at this stage as to whether there’s any link between this company and this firm of solicitors at all at the moment I would probably doubt it again it says we require promptly removing the company’s name from the

Video and so on but here’s where we get to the real problem if you remember what I said about the unjustified threats at the beginning of this video if somebody makes an unjustified threat of trademark infringement then that in itself might give rise to a cause of action now the

Bit that I would be concerned about if I were advising any company in this kind of situation that has made these kind of threats like this it’s this bit here it says we aim to resolve this issue amicably but are prepared to take legal action if necessary furthermore we’d

Like to clarify that our marketing activities including advertisements on various platforms Vans buses do not imply our responsibility for incidents involving those mediums well no to be fair it’s the driver although it does reflect badly on the brand and there could be an argument as to vicarious liability I.E the company being liable

For the actions of its drivers although in most instances it would be the driver that would be found liable but there’s not much they can do about the damage to the reputation but it is what it is if you put the name of your company on the

Side of your van and your driver drives badly your company might suffer a loss to its reputation that’s just the way the world Works uh we believe you’ve attempted to damage our reputation by misleading the public in your videos then we be in the Realms of defamation

So if what they are really saying is we think that you are damaging our reputation then one defense to that might be well it’s the truth and any person that is in possession of any fact at the time and has had the opportunity to see the full video which you have

Because I’ll link it in the description below then if the meaning of what they’re complaining about is that the driver is bad and anyone watching it could come to the same view then the defense of the truth or at the very least opinion could come into play

Although if we go back to the video for a moment and look at what’s in the description here it says the road markings aren’t the best as they force cyclist out into the middle of the road that’s the explanation I gave you at the beginning but that’s no excuse to

Perform a dangerous overtaking maneuver and nearly knock someone off their bike it’s slow moving traffic the driver got nowhere has stopped at red lights for a few moments later references the company with a question mark as if to call them out to say I don’t think I’ll be

Bothering with any fancy plaster work from yourselves wouldn’t want aode death on my conscience if one happened whilst you were out driving which seems entirely plausible that to me is quite clearly opinion it’s just what this video maker thought about this incident at the time and has provided the full

Video so that anybody can get their own view of it but back to the email and what I’m concerned about so this goes on even further it then goes on with another request to formally and request the immediate removal of the company’s name from the videos uh so they’ve

Requested that I think three times now but then again the bit that I would be concerned about where it says non-compliance will lead us to seek legal address and claim any related expenses including lost sales now of course the last bit there makes clear what they are really worried about they

Are worried about damage to the reputation of the company and lost sales which to be fair shouldn’t really be impacted by this because one driver driving badly should not in my view harm the reputation of a company if many of them were doing that then collectively it would probably cause harm to the

Reputation of the company but with just one as a oneoff and many people might not think that this is such a bad overtake anyway not to say that it isn’t I mean some people think it is some people think it isn’t that’s for you to decide yourself of course and you can

Debate that in the comment section but then we come to the law as I mentioned on unjustified threats you see the legal drafters that put this piece of legislation together came up with this notion that if someone had a trademark they then might try to weaponize that

Trademark by going after all sorts of companies that just happen to include some reference to that trademark in some form or another but not potentially in ways that’s restricted by this act such as the exclusive right to Market goods and services using that trademark so for

Example in this case by way of example in my view this chap on a bike is not marketing goods or services by the use of this trademark therefore it’s not trademark infringement section 21 covers the unjustified threats threats of infringement proceedings it says a communication contains a threat of

Infringement proceedings if a reasonable person in the position of a recipient would understand from the communication that the registered trademark exists the email confirmed that and a person intends to bring proceedings whether in the court in the United Kingdom or elsewhere against another person for infringement of the register trademark

By an act done in the UK or an act done which if done would be done in the UK so that’s the definition of the threat of infringement proceedings which is quite clearly set out in this email in a number of places not least of which the final one here non-compliance will lead

Us not may not we may consider which might still amount to a threat but non-compliance I.E if you don’t do what we ask we will seek legal redress and claim any related expenses including loss sales so if you don’t do this we will sue you is how any reasonable

Person would probably understand that message and then we go back to the trademarks act which defines an actionable threat in other words you receive a threat and you have a cause of action based on that threat it says subject to subsections 2 to a threat of infringement proceedings made by a

Person is actionable by any person aggrieved by the threat but then subsections 2 to six are if they have done such a thing such as apply the trademark to good and services or they’re accused of doing that or if they would have done that it would amount to

Infringement and so on but in the email there was no specific threat of you have applied this trademark to goods or services is in my view they are simply describing how it’s been referenced in the video by being shown on the van which is not his doing it’s on the van

In the video and the title and the description are referenced to that trademark but describing what has happened and nowhere in the email does it say here one product that you’ve applied our trademark to or here’s a service that you’re offering that you’ve applied our trademark to it simply

References the trademark as being within the video content within the title within the description uh potentially turning up in meta descriptions and so on and search results but this happens all the time and there are some very narrow cases that might well amount to trademark infringement which is why you

Should always seek formal legal advice and why this video is just guidance and just my general views I have to say that because if you were to fully interpret this and take action on it without taking legal advice it would be remiss of me to tell you that you cannot rely

On this video as legal advice but that’s how I see this um in the grand scheme of things I feel that this company is a grieved that one of their drivers has been filmed placed on YouTube and potentially causing harm to their reputation for what it’s worth I think

That is just one driver and it should not damage the reputation of the company albeit the company might want to speak to that driver and hopefully they will improve their driving but as I say some of you might not feel that that was bad driving anyway I do know that many of

You will think that it is bad driving and that it was far too close to the cyclist particularly those of you that do cycle but equally some of you that cycle might think that it’s perfectly fine so there are lots of different views on this but all of which are far

Removed from the threats of trademark infringement however it doesn’t quite end there because now we come back to the law on what someone can do if there has been an unjustified threat these are what we call remedies now if someone is so aggrieved by an unjustified threat then proceedings in respect of an

Actionable threat which is the one we’ve just described may be brought against the person who made the threat for firstly a declaration that the threat was unjustified which in other words is this chap on a bike could potentially go to court and ask the court for a declaration that the trademarks threat was

Unjustified and claim the costs for doing so and just very briefly as I’m editing this I’ve realized I haven’t really talked about the costs which would be involved in this so if anyone was to let’s say bring an action for an injunction to prevent and restrict anyone else from continuing to make such

Threats I would anticipate the legal cost of doing so to be at the very least even the first state Wes 45,000 for even the initial interim injunction and then going back for the full claim of doing so could be at least the same again or double depending on

Which lawyer you instruct so we’re talking about many thousands of pounds for bringing the proceedings for the injunction to restrict someone else from making those threats against you that are unjustified all of which of course they will be ordered to pay if you are successful in your application for an

Injunction to restrict them from making such threats in the future so we’re talking thousands of pounds I just thought I’d throw that in there while I’m editing secondly an injunction to prevent any further threats let’s say he was losing sleep over this threat and the constant fear of litigation pending

And looming over him for a potential claim of trademark infringement he could himself if he believed that this was an unjustified threat could seek an injunction of the court to prevent the continuance of this threat and finally damages in respect of any loss sustained by the agreed person by reason of the

Threat and that’s fairly broad so for example if you were to seek legal advice and the legal advice were along the lines of what I’ve said in this video and then go to court and etc etc all of those would be damages considered loss sustained by an AG grieved person by

Reason of an unjustified threat so I hope that was useful and interesting to you uh do be careful going around if you have a trademark threatening others with it and trying to weaponize it it can get you the maker of an unjustified threat into heaps of trouble if you found that

Vaguely interesting to adopt the comments of my learned friend Mr Alan Robert Shaw who you’ll find Linked In the description below please do like the video and subscribe around 60% of you don’t I’ll really appreciate it if you do because I do put a lot of effort into

These videos and as always I thank you heartedly for watching and happy New Year