Border protection measures and criminal provisions in Australia

Border protection measures and criminal provisions in Australia

This article first appeared in the June 2008, Chinese-language edition of Managing Intellectual Property. To view the original article in Chinese, click here (PDF).

Border protection measures

The Commonwealth Trade Marks Act 1995 ("TMA") provides for border protection methods and allows a trade mark owner to lodge a Notice of Objection ("Notice") to importation of goods which infringe or appear to infringe a registered trade mark.

Similar provisions are contained in the Copyright Act 1968.

Notice of objection lodged with Australian customs

Under the TMA a trade mark owner or an authorised user of a trade mark may lodge a Notice with the Australian Customs Service objecting to the importation of goods bearing a trade mark applied to them which is substantially identical with or deceptively similar to a registered trade mark.

A Notice provides Customs with details of genuine trade marks and the goods covered by these trade marks. If a Notice has been lodged and Customs becomes aware of a shipment of goods which it suspects are not genuine and which it believes are intended for commercial use (eg sale, lease, hire), it will seize and hold the goods for a limited period of time. The trade mark owner then has 10 working days to commence legal action.

If a trade mark is comprised of a stylised word mark or a device mark in which copyright subsists, it would also be appropriate to lodge a Notice in relation to those copyright works under the Copyright Act 1968. A copyright Notice can be lodged immediately whereas the trade mark Notice cannot be lodged until registration of the relevant mark.

A Notice is valid for four years and may be re-lodged. Separate Notices are required for trade marks and copyright. However, each Notice can refer to multiple trade marks or copyright works.

Criminal penalties for trade mark infringement

The TMA also provides criminal provisions and, a person is guilty of an offence if the person:

  1. falsifies (alters, defaces, adds to or partly removes, erases or obliterates) a registered trade mark or unlawfully removes (ie, without the permission of the registered owner of the trade mark) a registered trade mark;
  2. makes or has in the person’s possession, a die, block, machine or instrument knowing (or reckless as to whether) it is likely to be used to falsely apply trade marks to goods;
  3. programs a computer to falsify a trade mark; or
  4. intentionally deals in (i.e., sells, exposes for sale, possesses or imports) goods for the purpose of trade or manufacture knowing that or reckless as to whether a falsified registered trade mark is applied to them or removed from them or a registered trade mark is falsely applied to them.

As the offences are criminal in nature the offences must be proven beyond reasonable doubt.

A person guilty of any of the offences is punishable by a fine of up to US$55,000 for an individual or US$275,000 for a corporation and/or (if an individual) imprisonment for a period not exceeding two years.

The Act also allows for the seizure, forfeiture and destruction of infringing goods and any die, block, machine or instrument used in commission of an offence.