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:

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

IP Australia is now seeking comments on the options. IP Australia identified the following broad issues:
  • 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?
In summary, the options that IP Australia recommended for adoption are:
  • 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).
By contrast, IP Australia also considered a number of other options which it believes should not be adopted at this stage. The rejected options were:
  • 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.
Comments should be sent to IP Australia by February 27 2009.
Julian Gyngell, Julian Gyngell, Wahroonga

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