WARNING

PRINT ON is a REGISTERED Trade Mark of  IP Australia.

Counterfeiting and piracy

 

Certain breaches – piracy and forgery – of the Copyright Act 1968 and the Trade Marks Act 1995 constitute criminal offences.

Criminal liability

Under the Trade Marks Act 1995, it is an offence to:

  • falsify a registered trade mark
  • falsely apply a registered trade mark
  • alter or remove a trade mark knowing it is a registered trade mark
  • make a die or equipment that can help in falsifying or removing a trade mark
  • sell, possess, distribute or import a good, knowing that the trade mark has been falsified or removed.

The Copyright Act 1968 similarly provides for criminal sanctions. Under this Act it is an offence to:

  • knowingly import, possess, sell, distribute or commercially deal with an infringing copy
  • offer for sale infringing copies of computer programs
  • transmit a computer program to enable it to be copied when received.

The Copyright Act 1968 provides for individuals to be fined up to $50 000 and for corporations to be fined up to $250 000. The possible term of imprisonment is up to five years.

The penalties under the Trade Marks Act 1995 are sentences up to two years and fines of up to $55 000.

The Plant Breeder’s Rights Act 1994 provides for individuals to be fined up to $55 000 and for corporations to be fined up to $275 000. The possible term of

Infringement of trade marks on the internet

When you trade over the internet, you are entering a global marketplace. Registration of a trade mark in Australia does not give you any rights in relation to that trade mark overseas. If you offer goods or services for sale on the internet, you could be sued for infringement in a country where someone else owns the trade mark.

Australia is a member of the World Intellectual Property Organization (WIPO) which establishes guidelines to protect trade mark owners who trade over the internet.

Be aware of the potential risks you face when trading over the internet. You should seek legal advice on the best ways you can avoid or minimise those risks. Most importantly, you should seek legal advice if you receive notice from an overseas trade mark owner alleging that you are infringing their trade mark via the internet.

Trade mark owners contemplating trading over the internet should consider applying for international trade marks.

Generic use

Once registered, you need to ensure that your trade mark continues to be regarded as a trade mark. If your trade mark becomes known as the generic name for your goods or services and ceases to be recognised as a trade mark, an application to the courts to have the registration cancelled may be successful.

Many words have started out as trade marks and passed into common language, for example the word ‘windsurfer’ describes a type of water craft.

Removal of trade mark from the register for non-use

A person can apply to have your trade mark removed from the register. Such applications can be made if you have not used your trade mark for a period of three years or if you have not used your trade mark and you had no intention of using the trade mark when the application was filed. The person applying for removal is often a trade mark applicant whose registration is being hindered by your registered trade mark. If you do not oppose the removal action, your trade mark will be removed. For more information about non-use of a trade mark.

Court action

Another person can apply directly to a court for a court order to remove or cancel your trade mark registration. It is your responsibility to defend and protect your trade mark.

Objecting to importation of goods

You can object to the importation of goods that infringe your registered trade mark by giving notice to the Australian Customs Service.

Warning – unofficial register/services

Beware of unofficial registers or services and unsolicited IP services. Before paying a fee for any IP related service, please be sure to check the bona fides of the service provider.

As a trade mark owner, you may be sent unsolicited documents from companies that offer, for a fee, to register your trade mark information for the implied purpose of protecting trade mark rights.

These companies send documents resembling invoices to trade mark owners that offer ‘entry’ of trade mark details in an annual publication. They are usually sent after the trade mark details have been advertised in the Australian Official Journal.

These companies are not associated with us and have no official or governmental authority. The service they offer does not provide official trade mark registration or trade mark rights in Australia or any other country.

Some of these companies identify themselves as:

  • Globus Edition SL, Palma de Mallorca, Spain
  • Company for Economic Publications Ltd, Vienna, Austria
  • IT & TAG, Switzerland
  • Company for Publications and Information Anstalt, Liechtenstein
  • INFOCOM, Schaan, Switzerland
  • Edition The Marks KFT
  • International Bureau for Federated Trademark & Patent Register
  • Gaia Almanach LTD
  • Commercial Centre for Industry and Trade, Switzerland
  • European Institute for Economy and Commerce EIEC, Belgium
  • Institute of Commerce, Trade and Commerce, Switzerland
  • TM Collection, Hungary
  • ZDR – Daten register GmbH, Germany
  • Register of International Patents and Trademarks (RIPT)

Assignment of trade marks

Ownership of an application or registered trade mark can be transferred by assignment. If a trade mark is assigned, then the person registered as the owner, or the person to whom the trade mark has been assigned, applies to the registrar for the assignment to be recorded on the register.

The assignment is effective whether or not it is filed. The Act does not deal with the effect of failing to record an assignment. Therefore there is no recourse if you try to register a trade mark and find it is in use. Register your trade mark before you start trading and using it as a business name so you can ensure your interests are covered.

When an assignment of a trade mark is lodged with us, the details of that assignment are deemed to be in the register and the assignee becomes the owner of the trade mark from the day it is filed.

If an assignment takes place, you are required to notify us. Either the assignor or assignee (old owner or new owner) can submit the assignment. An assignment of a trade mark application is deemed recorded once it has been filed with us, even if it is not yet registered.