Options paper on penalties and additional damages published

Following the review of the penalty provisions of the Trademarks Act 1995, IP Australia has published an options paper. The review was in response to:

• a recommendation by the Advisory Council on Intellectual Property; and
• the changes made in 2007 to the penalties in the Copyright Act 1968.

The review also considered additional damages in civil actions for trademark infringement.

• Are the criminal penalties under the Trademarks Act sufficient to deter and punish trademark counterfeiting?
• Are the current penalties consistent with the level of penalties applied for crimes of a corresponding gravity?
• If there need to be changes to the trademarks penalties regime, what options identified in the options paper will effectively address the above issues?
• Should provisions for additional damages be introduced in the Trademarks Act?

• raising maximum penalties for existing offences in Sections 145 to 148 of the act;
• introducing summary offences with lower fault requirements; and
• introducing additional (ie, punitive) damages as a remedy for civil actions (IP Australia considers that this option should be adopted primarily to allow for a punitive response, where necessary, in civil actions for trademark infringement).

• introducing strict liability offences and an infringement notice scheme;
• introducing escalating penalties for repeat offenders; and
• aligning fines with the retail value of the genuine goods.