Counterfeiters beware! Court of Appeal rules on criminal provisions of the Trade Marks Act

David Jackson and Campbell Thompson of Freehills report on a recent decision of the Court of Appeal of the Supreme Court of Victoria, Commonwealth Director of Public Prosecutions Reference No 1 of 2008 [2008] [VSCA] 214. According to David Jackson and Campbell Thompson, the decision brings good news to owners and licensees of trade marks in Australia, particularly trade marks that are well known and often targeted by counterfeiters.

As David Jackson and Campbell Thompson report, the decision has clarified the tests to be applied in determining whether there has been a contravention of the criminal offence provisions of the Trade Marks Act 1995 (Cth) (Act). The decision confirms that it is not necessary to prove that the accused knew that his or her conduct was unlawful or wrong. Instead, it must be proved only that the accused committed the relevant acts either intentionally or recklessly. As a result, it should now be easier to successfully prosecute persons involved in the importation and sale of commercial-scale quantities of counterfeit products.

Freehills – Counterfeiters beware! Court of Appeal rules on criminal provisions of the Trade Marks Act