The new provisions provide a framework for a “safe harbour”. This allows disputing parties to exchange information to resolve disputes where one of them would otherwise be entitled to bring a threats action. Certain conditions must be met and these only apply to the part of the communication which amounts to a threat. A communication containing a threat of infringement proceedings is a “permitted communication” if:
- it is not an express threat; and
- the part of the communication which contains information that relates to the threat was made solely for a permitted purpose; and
- all of the information that relates to the threat is information that;
- is necessary for that purpose, and
- the person making the communication reasonably believes is true.
Under the new provisions the court is given a power to add to the list of permitted purposes. This ensures that sufficient guidance is provided without it becoming too inflexible. The exception can develop over time to better reflect surrounding circumstances and changes in the law. However, the provisions also rule out three purposes from being treated as being permitted. These are where a person is asked to stop doing something, destroy or hand over something or promise not to do something in respect of the disputed IP right.
The new provisions encourage parties involved in disputes to resolve their issues without running the risk of triggering litigation. The permitted communications sections of the Bill clearly lay out what constitutes a permitted purpose and what information may be given – making it easier to understand what can and cannot be communicated. Therefore, rights holders and those acting on their behalf can approach those they suspect of being secondary infringers with greater confidence. It also ensures that secondary infringers are not stripped of all protection because unless the conditions are satisfied an implied threat in a communication is actionable.
Remedies and defences
The first is the defence that the threat was justified because the acts referred to in it are, or if carried out would be, infringing. This defence is part of the current law. There is one change however. It is no longer expressly provided that if the person aggrieved can show in turn that the IP right is in fact invalid then the defence fails. This is because an invalid right cannot be infringed, and the change does not prevent someone from raising validity as an issue.
The second defence also comes from the current law where it is only available for patents; the new provisions extend it to trade marks and designs. It says that an approach to a secondary actor may not be an unjustified threat but, in order for the defence to apply, certain conditions must be satisfied.
The threatener must show:
- That they have taken all reasonable steps to identify the primary actor but have not been able to identify anyone; and
- they have notified the secondary infringer to whom they made the threat of the steps they took; and
- the notification was given either before or at the time of making the threat.
The defences allow businesses and individuals to threaten to sue secondary infringers and prevent further commercial damage where they can show that infringement is occurring, or would occur. A business can also threaten a secondary infringer and protect their IP right where they cannot find the source of the infringement to close it down. The provisions will ensure that the defences apply consistently across all the rights.