Section 90 of the Trade Marks Act (Chapter 385) exists because a threat can do commercial damage long before any court decides whether it was justified.
Section 90(1) — the cause of action
Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark which is registered, or alleged by the first-mentioned person to be registered, or some other like proceeding, a person aggrieved may — whether the person making the threats is or is not the registered proprietor or the registered user —
(a) bring any action against him; and
(b) obtain a declaration that the threats are unjustifiable and an injunction against the continuance of the threats; and
(c) recover such damages (if any) as he has sustained,
unless the person making the threats satisfies the court that the trade mark is registered and that the acts threatened over constitute, or if done would constitute, an infringement.
| Feature | Effect |
|---|---|
| “Circulars, advertisements or otherwise” | Any form of threat — a letter of demand, an email, a notice to retailers, a public announcement, a statement to a customer |
| “Or alleged… to be registered” | The section catches a threat over a mark that is not in fact registered — indeed that is its clearest case |
| “A person aggrieved” | Not only the person threatened. A manufacturer or supplier whose customers were threatened is typically the person most aggrieved |
| “Whether or not the proprietor” | Anyone who makes the threat is exposed, including a licensee or a trade association |
| “Unless… satisfies the court” | The burden is on the threatener, and both limbs must be made out — registration and infringement |
Writing to a competitor is one thing. Writing to its retailers, distributors or customers is where the real damage is done — and where a groundless threats action is most likely to follow, brought by the supplier as the person aggrieved. Unless you are confident of registration and infringement, and are prepared to sue, do not put the allegation to the trade.
Escaping section 90
There are two answers, and they are quite different in character.
Show that the mark is registered and that the acts complained of constitute, or would constitute, an infringement. This is a full defence, but it requires you to prove the infringement case in the very action brought against you.
Section 90(1) does not apply if the registered proprietor, or a registered user acting in pursuance of section 70(1), with due diligence commences and prosecutes an action against the person threatened for infringement of the mark.
Both words matter. Filing a writ and letting it sit is not prosecuting it. The subsection rewards a proprietor who is genuinely willing to litigate, and denies protection to one who threatens for effect without intending to follow through.
Note also who may rely on it: the registered proprietor, or a registered user acting under section 70(1) — that is, one who has called on the proprietor to sue and has waited the two months the section allows.
Section 90(3) — the lawyer exemption
This section does not render a lawyer liable to an action under it in respect of an act done by him in his professional capacity on behalf of a client.
The protection is personal to the lawyer, and confined to acts done in a professional capacity on behalf of a client. The client remains fully exposed: sending the threat through a lawyer does not make it any less a threat under section 90(1).
Section 90(4) — jurisdiction
Jurisdiction to hear a section 90 action is conferred on the Court — the National Court — but the section does not deprive another court of jurisdiction which it possesses. The same formula appears in section 58 for infringement actions.
Section 91 — the counter-claim
The defendant in an action under section 90 may apply, by way of counter-claim, for relief to which he would be entitled in a separate action in respect of an infringement by the plaintiff of the mark to which the threats relate — and in that case the provisions of the Act with respect to an infringement action apply, with the necessary modifications.
So a threats action does not put the mark owner on the back foot procedurally. The whole dispute — were the threats justified, and was there an infringement — is tried together, with the infringement issues governed by section 53, the defences by section 55, and the relief by section 56.
Writing a demand that does not expose you
- Verify the registration first. Obtain a current certified extract under section 9, and check the goods, the Part, and any conditions, limitations or disclaimers.
- Check the specification covers the goods. Section 53(1) reaches only goods in respect of which the mark is registered.
- Work through section 55 — own name, honest description, continuous prior use, spare parts, coexisting registrations — before asserting anything.
- Address the person responsible, not their customers, unless you are ready to sue.
- Do not overstate. Claiming registration you do not have is exposed under section 90 and is separately an offence under section 103.
- Where your rights rest on reputation, assert passing off — section 90 is directed at threats of proceedings for infringement of a trade mark.
- If you threaten, be ready to sue — section 90(2) protects only the proprietor who commences and prosecutes with due diligence.
Ask for the registration number and check the entry yourself; the Register is open to any person under section 8. Consider whether the mark is vulnerable to removal for non-use or rectification. And weigh a section 90 action — particularly where the threat has gone to your customers.
Sources
- Trade Marks Act (Chapter 385) — ss 8, 9, 13, 14, 53, 55, 56, 58, 70, 90, 91, 103
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.