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Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 [2012]

Schedule 5 Improving mechanisms for trade mark and copyright enforcement

Part 1 Customs seizure

Copyright Act 1968

1  Section 134B

Insert:

action period , in relation to particular seized copies, means the period prescribed by the regulations after notice of a claim for release of the copies is given to the objector under section 135AED.

2  Section 134B

Insert:

claim period , in relation to particular seized copies, means the period prescribed by the regulations after notice of seizure of the copies is given to the importer under section 135AC.

3  Section 134B

Insert:

personal information has the same meaning as in the Privacy Act 1988 .

4  Section 134B

Insert:

working day means a day that is not:

                     (a)  a Saturday; or

                     (b)  a Sunday; or

                     (c)  a public holiday in the Australian Capital Territory.

5  Subsection 135AC(1)

After “notice”, insert “(the seizure notice )”.

6  Subsections 135AC(2) to (7)

Repeal the subsections, substitute:

             (2)  The seizure notice must state that the copies will be released to the importer if:

                     (a)  the importer makes a claim for the release of the copies within the claim period; and

                     (b)  the objector has not, by the end of the action period:

                              (i)  instituted an action for infringement of copyright in relation to the copies; and

                             (ii)  given the CEO written notice of that action.

             (3)  The seizure notice must also:

                     (a)  set out the claim period for the copies; and

                     (b)  set out the action period for the copies and state that the action period will begin only if the importer makes a claim for the release of the copies; and

                     (c)  if the notice is given to the objector—state the name and the address of the place of business or residence of the importer (if known); and

                     (d)  if the notice is given to the importer—state the name and the address of the place of business or residence of:

                              (i)  the objector; or

                             (ii)  if the objector has nominated a person to be the objector’s agent or representative for the purposes of this Division—that person.

7  Paragraph 135AC(8)(a)

Repeal the paragraph, substitute:

                     (a)  the name, and the address of the place of business or residence, of any person or body (whether in or outside Australia) that made arrangements, on behalf of the importer, for the copies to be brought to Australia or any information that the CEO has, and believes on reasonable grounds may help in identifying and locating such a person or body; and

8  Paragraph 135AC(8)(b)

Omit “other information”, substitute “information (including personal information)”.

9  Subsections 135AD(2) and (3)

Omit “sample”, substitute “or more samples”.

10  Subsection 135AD(4)

Omit “copy” (wherever occurring), substitute “copies”.

11  Subsection 135AD(5)

Omit “a sample copy” (wherever occurring), substitute “sample copies”.

12  Subsection 135AE(3)

Omit all the words after “the Commonwealth”.

13  Section 135AF

Repeal the section, substitute:

135AEA   Claim for release of seized copies

             (1)  The importer may make a claim to the CEO for the release of seized copies.

             (2)  The claim must be made before the end of the claim period for the copies.

             (3)  The claim must:

                     (a)  be in the form (if any) prescribed by the regulations; and

                     (b)  include the information prescribed by the regulations.

Note:          Sections 137.1 and 137.2 of the Criminal Code create offences for providing false or misleading information or documents.

135AEB   Seized copies not claimed are forfeited

             (1)  Seized copies are forfeited to the Commonwealth if a claim for the release of the goods is not made within the claim period for the copies.

             (2)  However, if the CEO allows a late claim for the copies (see section 135AEC), the copies are taken not to have been forfeited.

135AEC   Late claim for release of seized goods

             (1)  The CEO may allow the importer to make a claim (the late claim ) to the CEO for the release of seized copies after the end of the claim period for the copies.

             (2)  The CEO may allow the late claim only if:

                     (a)  an action for infringement of copyright in relation to the copies has not been instituted; and

                     (b)  the CEO considers it reasonable in the circumstances; and

                     (c)  the goods have not been disposed of under section 135AI.

135AED   Objector to be notified of claim

             (1)  If the importer makes a claim for the release of seized copies, the CEO must, as soon as practicable, give notice of the claim to the objector.

             (2)  The notice:

                     (a)  must be in writing; and

                     (b)  may include any information that the CEO has, and believes on reasonable grounds may be relevant, for the purpose of identifying and locating either or both of the following:

                              (i)  the importer of the copies;

                             (ii)  any other person or body (whether in or outside Australia) that made arrangements for the copies to be brought to Australia.

135AF   Release of seized copies to importer

             (1)  The CEO must release seized copies to the importer if:

                     (a)  the objector gives written notice to the CEO stating that the objector consents to the release of the seized copies; and

                     (b)  the copies have not been disposed of under section 135AI.

             (2)  The CEO may release seized copies to the importer at any time if:

                     (a)  the CEO, having regard to information that has come to his or her knowledge after the copies were seized, is satisfied that there are no reasonable grounds for believing that copyright has been infringed by the importation of the copies; and

                     (b)  the objector has not brought an action for infringement of copyright in relation to the copies.

             (3)  The CEO must release seized copies to the importer if:

                     (a)  the importer has made a claim for the release of the copies; and

                     (b)  the objector has not, by the end of the action period:

                              (i)  instituted an action for infringement of copyright in relation to the copies; and

                             (ii)  given the CEO written notice of that action.

             (4)  The CEO must release seized copies to the importer if:

                     (a)  the importer has made a claim for the release of the copies; and

                     (b)  an action for infringement of copyright has been instituted in relation to the copies; and

                     (c)  at the end of a period of 20 working days commencing on the day on which the action was instituted, there is not in force an order of the court in which the action was instituted preventing the release of the copies.

             (5)  This section has effect subject to section 135AH.

135AFA   Copies released but not collected are forfeited

                   Seized copies are forfeited to the Commonwealth if:

                     (a)  the copies are released by the CEO to the importer; and

                     (b)  the importer does not take possession of the copies within 90 days of the release.

14  Section 135AI

Repeal the section, substitute:

135AI   Disposal of seized copies forfeited to the Commonwealth

             (1)  Seized copies forfeited to the Commonwealth must be disposed of:

                     (a)  in the manner prescribed by the regulations; or

                     (b)  if no manner of disposal is so prescribed—as the CEO directs.

             (2)  However, copies forfeited under section 135AEB must not be disposed of until 30 days after their forfeiture.

             (3)  Subsection (1) does not require the disposal of copies that are required in relation to an action for infringement of copyright.

Right of compensation in certain circumstances

             (4)  Despite the forfeiture of seized copies to the Commonwealth, a person may apply to a court of competent jurisdiction under this section for compensation for the disposal of the copies.

             (5)  A right to compensation exists if:

                     (a)  the copies did not infringe the objector’s copyright; and

                     (b)  the person establishes, to the satisfaction of the court:

                              (i)  that he or she was the owner of the copies immediately before they were forfeited; and

                             (ii)  that there were circumstances providing a reasonable excuse for the failure to make a claim for the release of the copies.

             (6)  If a right to compensation exists under subsection (4), the court must order the payment by the Commonwealth to the person of an amount equal to the market value of the copies at the time of their disposal.

15  Paragraph 195B(1)(c)

Repeal the paragraph, substitute:

                     (c)  a decision of the CEO under section 135AA refusing to seize copies under subsection 135(7);

                    (ca)  a decision of the CEO under section 135AEC refusing to allow a late claim for the release of seized copies;

                   (cb)  a decision of the CEO under section 135AJ refusing to seize copies under subsection 135(7);

16  Subsection 195B(3)

Omit “paragraph (1)(ba), (c) or (d)”, substitute “paragraphs (1)(ba) to (d)”.

Trade Marks Act 1995

17  Readers guide (list of terms defined in section 6)

Insert the following terms in their appropriate alphabetical positions:

“action period”

“claim period”

“personal information”.

18  Section 6

Insert:

action period , in relation to particular seized goods, means the period prescribed by the regulations after notice of a claim for release of the goods is given to the objector under section 136C.

19  Section 6

Insert:

claim period , in relation to particular seized goods, means the period prescribed by the regulations after notice of seizure of the goods is given to the designated owner under section 134.

20  Section 6

Insert:

personal information has the same meaning as in the Privacy Act 1988 .

21  Section 134

Repeal the section, substitute:

134   Notice of seizure

             (1)  As soon as is practicable after goods are seized under section 133, the Customs CEO must give to the designated owner and the objector, either personally or by post, a written notice (the seizure notice ) identifying the goods and stating that the identified goods have been seized.

Note:          For designated owner and objector see section 6.

             (2)  The seizure notice must state that the goods will be released to the designated owner if:

                     (a)  the designated owner makes a claim for the release of the goods within the claim period; and

                     (b)  the objector has not, by the end of the action period:

                              (i)  instituted an action for infringement of the notified trade mark in respect of the goods; and

                             (ii)  given the Customs CEO written notice of that action.

Note:          For claim period , action period and notified trade mark see section 6.

             (3)  The seizure notice must also:

                     (a)  set out the claim period for the goods; and

                     (b)  set out the action period for the goods and state that the action period will begin only if the designated owner makes a claim for the release of the goods; and

                     (c)  if the notice is given to the objector—state the name and the address of the place of business or residence of the designated owner (if known); and

                     (d)  if the notice is given to the designated owner—state the name and the address of the place of business or residence of:

                              (i)  the objector; or

                             (ii)  if the objector has nominated a person to be the objector’s agent or representative for the purposes of this Division—that person.

             (4)  The Customs CEO may, at any time after the goods are seized, give to the objector:

                     (a)  the name and the address of the place of business or residence of any person or body (whether in or outside Australia) that made arrangements, on behalf of the designated owner of the goods, for the goods to be brought to Australia or any information that the Customs CEO has, and believes on reasonable grounds may help in identifying and locating such a person or body; and

                     (b)  any information (including personal information) that the Customs CEO has and believes on reasonable grounds may be relevant for the purpose of identifying and locating the importer of the goods; and

                     (c)  any information (including personal information) that the Customs CEO has and believes on reasonable grounds may be relevant for the purpose of identifying and locating the designated owner of the goods.

134A   Inspection, release etc. of seized goods

             (1)  The Customs CEO may permit the objector or the designated owner to inspect the seized goods.

Note:          For designated owner , objector and seized goods see section 6.

             (2)  If the objector gives the Customs CEO the requisite undertakings, the Customs CEO may permit the objector to remove one or more samples of the seized goods from the custody of the Customs CEO for inspection by the objector.

             (3)  If the designated owner gives the Customs CEO the requisite undertakings, the Customs CEO may permit the designated owner to remove one or more samples of the seized goods from the custody of the Customs CEO for inspection by the designated owner.

             (4)  The requisite undertakings are undertakings in writing that the person giving the undertaking will:

                     (a)  return the sample goods to the Customs CEO at a specified time that is satisfactory to the Customs CEO; and

                     (b)  take reasonable care to prevent damage to the sample goods.

             (5)  If the Customs CEO permits inspection of the seized goods, or the removal of sample goods, by the objector in accordance with this section, the Commonwealth is not liable to the designated owner for any loss or damage suffered by the designated owner arising out of:

                     (a)  damage to any of the seized goods incurred during that inspection; or

                     (b)  anything done by the objector or any other person to, or in relation to, sample goods removed from the custody of the Customs CEO or any use made by the objector of such sample goods.

Note:       The heading to section 135 is replaced by the heading “ Consent to forfeiture of seized goods ”.

22  Section 136

Repeal the section, substitute:

136   Claim for release of seized goods

             (1)  The designated owner may make a claim to the Customs CEO for the release of seized goods.

Note:          For designated owner and seized goods see section 6.

             (2)  The claim must be made before the end of the claim period for the goods.

Note:          For claim period see section 6.

             (3)  The claim must:

                     (a)  be in the form (if any) prescribed by the regulations; and

                     (b)  include the information prescribed by the regulations.

Note:          Sections 137.1 and 137.2 of the Criminal Code create offences for providing false or misleading information or documents.

136A   Seized goods not claimed are forfeited

             (1)  Seized goods are forfeited to the Commonwealth if a claim for the release of the goods is not made within the claim period for the goods.

Note:          For seized goods and claim period see section 6.

             (2)  However, if the Customs CEO allows a late claim for the goods (see section 136B), the goods are taken not to have been forfeited.

136B   Late claim for release of seized goods

             (1)  The Customs CEO may allow the designated owner to make a claim (the late claim ) to the Customs CEO for the release of seized goods after the end of the claim period for the goods.

Note:          For objector , seized goods and claim period see section 6.

             (2)  The Customs CEO may allow the late claim only if:

                     (a)  an action for infringement of the notified trade mark in respect of the goods has not been instituted; and

                     (b)  the Customs CEO considers it reasonable in the circumstances; and

                     (c)  the goods have not been disposed of under section 139.

             (3)  An application may be made to the Administrative Appeals Tribunal for the review of a decision of the Customs CEO under subsection (1) refusing to allow a late claim for the release of seized goods.

136C   Objector to be notified of claim

             (1)  If the designated owner makes a claim for the release of seized goods, the Customs CEO must, as soon as practicable, give notice of the claim to the objector.

Note:          For designated owner , objector and seized goods see section 6.

             (2)  The notice:

                     (a)  must be in writing; and

                     (b)  may include any information that the Customs CEO has, and believes on reasonable grounds may be relevant, for the purpose of identifying and locating either or both of the following:

                              (i)  the importer of the goods;

                             (ii)  any other person or body (whether in or outside Australia) that made arrangements for the goods to be brought to Australia.

136D   Release of seized goods

             (1)  The Customs CEO must release seized goods to the designated owner if:

                     (a)  the objector gives written notice to the Customs CEO stating that the objector consents to the release of the seized goods; and

                     (b)  the goods have not been disposed of under section 139.

Note:          For designated owner , objector and seized goods see section 6.

             (2)  The Customs CEO may release seized goods to the designated owner at any time if:

                     (a)  the Customs CEO, having regard to information that has come to his or her knowledge after the goods were seized, is satisfied that there are no reasonable grounds for believing that the notified trade mark has been infringed by the importation of the goods; and

                     (b)  the objector has not brought an action for infringement of the notified trade mark in respect of the goods.

             (3)  The Customs CEO must release seized goods to the designated owner if:

                     (a)  the designated owner has made a claim for the release of the goods; and

                     (b)  the objector has not, by the end of the action period:

                              (i)  instituted an action for infringement of the notified trade mark in respect of the goods; and

                             (ii)  given the Customs CEO written notice of that action.

Note:          For action period see section 6.

             (4)  The CEO must release seized goods to the designated owner if:

                     (a)  the designated owner has made a claim for the release of the goods; and

                     (b)  action for infringement of the notified trade mark in respect of the goods has been instituted; and

                     (c)  at the end of a period of 20 working days commencing on the day on which the action was instituted, there is not in force an order of the court in which the action was instituted preventing the release of the goods.

             (5)  This section has effect subject to section 140.

136E   Goods released but not collected are forfeited

                   Seized goods are forfeited to the Commonwealth if:

                     (a)  the goods are released by the Customs CEO to the designated owner; and

                     (b)  the designated owner does not take possession of the goods within 90 days of the release.

Note:          For designated owner and seized goods see section 6.

23  Subsection 137(1)

Omit all the words after “in respect of seized goods”.

24  Paragraph 137(3)(a)

Omit “their”, substitute “the”.

25  Subsection 137(5)

Repeal the subsection.

26  Section 139

Repeal the section, substitute:

139   Disposal of seized goods forfeited to the Commonwealth

             (1)  Seized goods forfeited to the Commonwealth must be disposed of:

                     (a)  in the manner prescribed by the regulations; or

                     (b)  if no manner of disposal is so prescribed—as the Customs CEO directs.

Note:          For seized goods see section 6.

             (2)  However, goods forfeited under section 136A must not be disposed of until 30 days after their forfeiture.

Note:          If the Customs CEO allows a late claim under section 136B for goods that have been forfeited under section 136A, the goods are taken not to have been forfeited.

             (3)  Subsection (1) does not require the disposal of goods that are required in relation to an action for infringement of a trade mark.

Right of compensation in certain circumstances

             (4)  Despite the forfeiture of seized goods to the Commonwealth, a person may apply to a court of competent jurisdiction under this section for compensation for the disposal of the goods.

             (5)  A right to compensation exists if:

                     (a)  the goods did not infringe the objector’s notified trade mark; and

                     (b)  the person establishes, to the satisfaction of the court:

                              (i)  that he or she was the owner of the goods immediately before they were forfeited; and

                             (ii)  that there were circumstances providing a reasonable excuse for the failure to make a claim for the release of the goods.

             (6)  If a right to compensation exists under subsection (4), the court must order the payment by the Commonwealth to the person of an amount equal to the market value of the goods at the time of their disposal.



 

Part 2 Trade Mark offences

Trade Marks Act 1995

27  Sections 145 to 149

Repeal the sections, substitute:

145   Falsifying or removing a registered trade mark

Indictable offence

             (1)  A person commits an offence if:

                     (a)  a registered trade mark has been applied to goods, or in relation to goods or services; and

                     (b)  the goods or services are being, or are to be, dealt with or provided in the course of trade; and

                     (c)  the person:

                              (i)  alters or defaces the trade mark; or

                             (ii)  makes any addition to the trade mark; or

                            (iii)  wholly or partly removes, erases or obliterates the trade mark; and

                     (d)  the person does so without:

                              (i)  the permission of the registered owner, or an authorised user, of the trade mark; or

                             (ii)  being required or authorised to do so by this Act, a direction of the Registrar or an order of a court.

Penalty:  Imprisonment for 5 years or 550 penalty units, or both.

Note 1:       For registered trade mark and registered owner see section 6.

Note 2:       For authorised user see section 8.

Note 3:       For applied to goods and applied in relation to goods or services see section 9.

Note 4:       International trade marks may be protected under the regulations: see Part 17A.

Summary offence

             (2)  A person commits an offence if:

                     (a)  a registered trade mark has been applied to goods, or in relation to goods or services; and

                     (b)  the goods or services are being, or are to be, dealt with or provided in the course of trade; and

                     (c)  the person:

                              (i)  alters or defaces the trade mark; or

                             (ii)  makes any addition to the trade mark; or

                            (iii)  wholly or partly removes, erases or obliterates the trade mark; and

                     (d)  the person does so without:

                              (i)  the permission of the registered owner, or an authorised user, of the trade mark; or

                             (ii)  being required or authorised to do so by this Act, a direction of the Registrar or an order of a court.

Penalty:  Imprisonment for 12 months or 60 penalty units, or both.

             (3)  The fault element for paragraphs (2)(a), (b) and (d) is negligence.

146   Falsely applying a registered trade mark

Indictable offence

             (1)  A person commits an offence if:

                     (a)  the person applies a mark or sign to goods, or in relation to goods or services; and

                     (b)  the goods or services are being, or are to be, dealt with or provided in the course of trade; and

                     (c)  the mark or sign is, or is substantially identical to, the registered trade mark; and

                     (d)  the person applies the mark or sign without:

                              (i)  the permission of the registered owner, or an authorised user, of the trade mark; or

                             (ii)  being required or authorised to do so by this Act, a direction of the Registrar or an order of a court.

Penalty:  Imprisonment for 5 years or 550 penalty units, or both.

Note 1:       For registered trade mark and registered owner see section 6.

Note 2:       For authorised user see section 8.

Note 3:       International trade marks may be protected under the regulations: see Part 17A.

Summary offence

             (2)  A person commits an offence if:

                     (a)  the person applies a mark or sign to goods, or in relation to goods or services; and

                     (b)  the goods or services are being, or are to be, dealt with or provided in the course of trade; and

                     (c)  the mark or sign is, or is substantially identical to, the registered trade mark; and

                     (d)  the person applies the mark or sign without:

                              (i)  the permission of the registered owner, or an authorised user, of the trade mark; or

                             (ii)  being required or authorised to do so by this Act, a direction of the Registrar or an order of a court.

Penalty:  Imprisonment for 12 months or 60 penalty units, or both.

             (3)  The fault element for paragraphs (2)(b), (c) and (d) is negligence.

147   Making a die etc. for use in trade marks offence

Indictable offence

             (1)  A person commits an offence if:

                     (a)  the person makes a die, block, machine or instrument; and

                     (b)  the die, block, machine or instrument is likely to be used for, or in the course of, committing an offence; and

                     (c)  the offence is an offence against section 145 or 146.

Penalty:  Imprisonment for 5 years or 550 penalty units, or both.

             (2)  Strict liability applies to paragraph (1)(c).

Note:          For strict liability, see section 6.1 of the Criminal Code .

Summary offence

             (3)  A person commits an offence if:

                     (a)  the person makes a die, block, machine or instrument; and

                     (b)  the die, block, machine or instrument is likely to be used for, or in the course of, committing an offence; and

                     (c)  the offence is an offence against section 145 or 146.

Penalty:  Imprisonment for 12 months or 60 penalty units, or both.

             (4)  The fault element for paragraph (3)(b) is negligence.

             (5)  Strict liability applies to paragraph (3)(c).

Note:          For strict liability, see section 6.1 of the Criminal Code .

147A   Drawing etc. trade marks for use in offence

Indictable offence

             (1)  A person commits an offence if:

                     (a)  the person draws, or programs a computer or other device to draw, a registered trade mark or part of a registered trade mark; and

                     (b)  the registered trade mark or part of the registered trade mark is likely to be used for, or in the course of, an offence; and

                     (c)  the offence is an offence against section 145 or 146.

Penalty:  Imprisonment for 5 years or 550 penalty units, or both.

Note:          For registered trade mark see section 6.

             (2)  Strict liability applies to paragraph (1)(c).

Note:          For strict liability, see section 6.1 of the Criminal Code .

Summary offence

             (3)  A person commits an offence if:

                     (a)  the person draws, or programs a computer or other device to draw, a registered trade mark or part of a registered trade mark; and

                     (b)  the registered trade mark or part of the registered trade mark is likely to be used for, or in the course of, an offence; and

                     (c)  the offence is an offence against section 145 or 146.

Penalty:  Imprisonment for 12 months or 60 penalty units, or both.

             (4)  The fault element for paragraph (3)(b) is negligence.

             (5)  Strict liability applies to paragraph (3)(c).

Note:          For strict liability, see section 6.1 of the Criminal Code .

147B   Possessing or disposing of things for use in trade marks offence

Indictable offence

             (1)  A person commits an offence if:

                     (a)  the person possesses or disposes of:

                              (i)  a die, block, machine or instrument; or

                             (ii)  a computer, or other device, programmed to draw a registered trade mark or part of a registered trade mark; or

                            (iii)  a representation of a registered trade mark or of part of a registered trade mark; and

                     (b)  the die, block, machine, instrument, computer, device or representation is likely to be used for, or in the course of, an offence; and

                     (c)  the offence is an offence against section 145 or 146.

Penalty:  Imprisonment for 5 years or 550 penalty units, or both.

Note:          For registered trade mark see section 6.

             (2)  Strict liability applies to paragraph (1)(c).

Note:          For strict liability, see section 6.1 of the Criminal Code .

Summary offence

             (3)  A person commits an offence if:

                     (a)  the possesses or disposes of:

                              (i)  a die, block, machine or instrument; or

                             (ii)  a computer, or other device, programmed to draw a registered trade mark or part of a registered trade mark; or

                            (iii)  a representation of a registered trade mark or of part of a registered trade mark; and

                     (b)  the die, block, machine, instrument, computer, device or representation is likely to be used for, or in the course of, an offence; and

                     (c)  the offence is an offence against section 145 or 146.

Penalty:  Imprisonment for 12 months or 60 penalty units, or both.

             (4)  The fault element for paragraph (3)(b) is negligence.

             (5)  Strict liability applies to paragraph (3)(c).

Note:          For strict liability, see section 6.1 of the Criminal Code .

148   Goods with false trade marks

Indictable offence

             (1)  A person commits an offence if:

                     (a)  the person:

                              (i)  sells goods; or

                             (ii)  exposes goods for sale; or

                            (iii)  possesses goods for the purpose of trade or manufacture; or

                            (iv)  imports goods into Australia for the purpose of trade or manufacture; and

                     (b)  any of the following applies:

                              (i)  there is a registered trade mark on the goods;

                             (ii)  there is a mark or sign on the goods that is substantially identical to a registered trade mark;

                            (iii)  a registered trade mark on the goods has been altered, defaced, added to, wholly or partly removed, erased or obliterated; and

                     (c)  the registered trade mark, or mark or sign, was applied, altered, defaced, added to, wholly or partly removed, erased or obliterated, as the case requires, without:

                              (i)  the permission of the registered owner, or an authorised user, of the trade mark; or

                             (ii)  the application being required or authorised by this Act, a direction of the Registrar or an order of a court.

Penalty:  Imprisonment for 5 years or 550 penalty units, or both.

Summary offence

             (2)  A person commits an offence if:

                     (a)  the person:

                              (i)  sells goods; or

                             (ii)  exposes goods for sale; or

                            (iii)  possesses goods for the purpose of trade or manufacture; or

                            (iv)  imports goods into Australia for the purpose of trade or manufacture; and

                     (b)  any of the following applies:

                              (i)  there is a registered trade mark applied to the goods;

                             (ii)  there is a mark or sign applied to the goods that is substantially identical to a registered trade mark;

                            (iii)  a registered trade mark applied to the goods has been altered, defaced, added to, wholly or partly removed, erased or obliterated; and

                     (c)  the registered trade mark, or mark or sign, was applied, altered, defaced, added to, wholly or partly removed, erased or obliterated, as the case requires, without:

                              (i)  the permission of the registered owner, or an authorised user, of the trade mark; or

                             (ii)  the application being required or authorised by this Act, a direction of the Registrar or an order of a court.

Penalty:  Imprisonment for 12 months or 60 penalty units, or both.

             (3)  The fault element for paragraphs (2)(b) and (c) is negligence.

Note 1:       For registered trade mark see section 6.

Note 2:       For applied to goods see section 9.

Note 3:       International trade marks may be protected under the regulations: see Part 17A.



 

Part 3 Relief for infringement of trade marks

Trade Marks Act 1995

28  Section 126

Before “The”, insert “(1)”.

29  At the end of section 126

Add:

             (2)  A court may include an additional amount in an assessment of damages for an infringement of a registered trade mark, if the court considers it appropriate to do so having regard to:

                     (a)  the flagrancy of the infringement; and

                     (b)  the need to deter similar infringements of registered trade marks; and

                     (c)  the conduct of the party that infringed the registered trade mark that occurred:

                              (i)  after the act constituting the infringement; or

                             (ii)  after that party was informed that it had allegedly infringed the registered trade mark; and

                     (d)  any benefit shown to have accrued to that party because of the infringement; and

                     (e)  all other relevant matters.