TM infringement - Government Review of Penalties and Additional Damages

Four and a half years ago, the Advisory Council on Intellectual Property conducted a Review of Trade Mark Enforcement, which suggested that penalties for trade mark infringement should be reviewed.

Prompted by this, and changes to penalties in the Copyright Act last year, IP Australia recently conducted a review of penalties in the Trade Marks Act 1995. An options paper has been developed from this review .

IP Australia is seeking comments from interested parties on the options raised in its Review of Penalties and Additional Damages with regards to the Trade Marks Act 1995 (Cth) released in November 2008 before it makes its final recommendations to the Australian Government.

The review aims to offer solutions to the problem of trade mark counterfeiting and observes that penalties for trade mark offences in Australia are low when compared with other developed economies.

IP Australia has listed a number of options which it considers could be adopted including:

• raising the maximum penalties for existing offences;
• introducing summary offence provisions with lower fault requirements;
• introducing provisions allowing for awards of additional damages.

IP Australia also gave consideration to the following three options which it has deemed untenable:

• 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 on the issues and options raised in the review must be sent to IP Australia by 27 February 2009.