The Act introduces a ‘safe harbour’ of ‘permitted communications’ which allow parties to communicate and take some steps towards resolving disputes without running the risk of triggering litigation. The provisions allow rights holders to attempt to identify the source of infringement by engaging with those further down the supply chain under a clear framework.
Clear boundaries are set such that rights holders and those acting on their behalf can approach those they suspect of being secondary infringers (such as retailers) with greater confidence. The provisions are underlined by the principle that rights holders should attempt to identify the source of the infringement (a person carrying out a primary act) in order to resolve disputes. Secondary actors maintain protection against unjustified threats and may bring a threats action if a communication does not satisfy the conditions required of a permitted communication.
A communication containing a threat of infringement proceedings is a ‘permitted communication’ if:
- it does not contain an express threat; and
- the part of the communication which contains information that relates to the threat was made for a permitted purpose (see below); 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.
The provisions give a list of examples of permitted purposes. The examples given are:
- giving notice that a patent exists;
- discovering the identity of a primary actor or whether primary acts of infringement have taken place;
- making a person aware of an IP right, where it is relevant to any proceedings (such as infringement proceedings) that the person is aware of the right.
The court is also given discretion to treat any other purpose as a permitted purpose in the interests of justice.
The provisions rule out three purposes from being considered as permitted. These are where the person making the threat asks a person –
- to stop doing something
- to destroy or to hand over something, or
- to promise not to do something in respect of the IP right in question.
The remedies available in a threats action are:
- An injunction stopping more threats being made, which can be obtained as an interim or final remedy.
- Damages for loss caused by the threat that is a natural and reasonable consequence of the threat being made.
- A declaration that the threats were unjustified.