Threats to sue for trade mark infringement can cause serious harm to the reputation of a business, it can lead to items being pulled from sale and subsequently lead to loss of sales and thus revenue. They can also be intimidating.

As agents of the person making the groundless threat their lawyers could also be sued, if they agree to send an ill-considered letter before action.

Section 21 of the Trade Marks Act 1994 provides for groundless threats. Any person aggrieved by threats may bring proceedings. Relief may be a declaration that the threats are unjustifiable, an injunction against further threats, and/or damages in respect of any loss sustained as a result of the threats.

The defendant to the threats action will have a defence if he can show he was right, and the act did, or would have, infringed his trade mark.

The claimant may prove the mark invalid in response, but if they were threatened in regard to their application of the mark to goods or their packaging, their importation of goods to which, or to the packaging that the mark has been applied, or the supply of services under the mark, then there are no grounds to complain about the threats.