IP Australia has issued an options paper reviewing the criminal penalties and whether or not additional damages should be available for trade mark infringement in Australia.
Some of the considerations for reforming the criminal penalties under the Trade Marks Act relate to the wide ranging reform of the criminal penalties structure in the Copyright Act effected by the amendments in 2006 and a perception that Australia’s penalties may be out of line with other countries’ approaches. (No mention of the behind the scenes ACTA negotiations is made). A key issue emerging from the paper, however, is that IP Australia is seeking to quantify the extent of counterfeiting activity in Australia – the paper suggests that the empirical evidence available to IP Australia does not seem to support the anecdotal claims.
Unlike copyright, patents and registered designs, additional damages are not available for infringement of registered trade marks. The options paper questions whether this should still be the case.
Apart from the anomalous treatment of trade marks compared to the other main statutory rights, I would have thought the US Free Trade Agreement (art. 17.11.7) leaves room for debate only about whether there are additional damages or statutory damages. May be there’s a transitional provision or side agreement that someone can point me to which makes this optional?
Written comments are required by 27 February 2009.