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• I. Australia

• Intellectual Property Policy

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• Theft of Intellectual Property

• Consultant's Report

I1. The Australian Copyright Act has provisions similar to those Sections 131 of the New Zealand Act. The provisions are controlled in Section 132 of the Australian Act, and while arranged differently, Australian Sections 132(1), (2), (2A) and (3) effectively cover the same activities as New Zealand Sections 131(1) and (2) reproduced above.

I2. The Australian Act does however provide that offences are committed if the offender "knows, or ought reasonably to know" the article to be an infringing copy. In the corresponding New Zealand provisions actual knowledge must be established.

I3. It has been held that when considering the knowledge question in Australia, the court is not concerned with the knowledge of a reasonable man but with reasonable inferences to be drawn from a concrete situation as disclosed in evidence as it affects the particular person who's knowledge is at issue.

I4. The penalties on conviction are more than in New Zealand, with fines up to A$50,000 for a natural person and A$250,000 for a corporation, and imprisonment of a natural person for up to six months, although for some works such as films and videos the penalty is imprisonment for up to 5 years.

I5. Section 134A provides that in the trial of prosecution, affidavit evidence may be given as to existence and ownership of copyright, and as to whether any particular act was done with or without the licence of the copyright owner.

I6. It is now understood that the Australian Parliament has just this month passed two Copyright Amendment Acts. So far as is relevant to this study they will together permit parallel importation of sound recordings and in 18 months will provide that copyright in certain labelling and packaging will not obstruct parallel importation of other goods.

I7. These new amendments will provide that in an infringement action involving the commercial importation or sale of copies of sound recordings, it must be presumed that the copies are not legitimate copies unless the defendant proves that the copies are legitimate ones. This is commendable as it overcomes the major disadvantage of freeing up parallel imports, that of opening the door to counterfeits.

I8. The precise wording of the new Australian provisions will need to be carefully considered when they become available.

I9. The Australian Trade Marks Act provides for criminal offences.

I10. It is an offence for a person, either intentionally or recklessly, to:

1. falsify or unlawfully remove a trade mark that has been applied to or in relation to any goods or services being dealt with or provided in the course of trade; or
2. falsely apply a registered trade mark to goods or in relation to services that are being dealt with or provided in the course of trade;

knowing that the trade mark is registered or reckless of whether or not the trade mark is registered (Sections 145 and 146).

I11. It is also an offence to intentionally sell goods, expose goods for sale, have goods in the person's possession for the purpose of trade or manufacture, import goods into Australia for the purpose of trade or manufacture, knowing that, or reckless of whether or not, falsified trade mark has been applied to the goods or a registered trade mark has been unlawfully removed from them (Section 148).

I12. It is also an offence for a person to make or have in his or her possession a die, block machine or instrument knowing that it is likely to be used, or reckless of whether or not it is likely to be used, for, or in the course of, committing an offence under these provisions. It is also an offence for a person to draw, or program a computer or other device to draw, a registered trade mark knowing that the trade mark or part of the trade mark is likely to be used for, or reckless of whether or not the trade mark or part of the trade mark, is likely to be used for, committing an offence under these provisions (Section 147).

I13. These offences carry penalties including fines of up to $A50,000 and/or imprisonment for up to two years for an individual or a fine of up to $A250,000 for a corporation. It is also an offence to aid and abet the doing of any act outside Australia which, if it were done in Australia, would be an offence under the Act.

I14. Sections 145-148 of the Australian Trade Marks Act are as follows:

I15. In summary, Australia trade mark law provides for criminal liability for making or possessing an instrument used for counterfeiting, and for trading in counterfeit goods, knowing or reckless as to whether trade mark registration is infringed. This is in addition to forgery and false application which is all that is provided for under the New Zealand Fair Trading Act, and for which there is no imprisonment.

I16. It is not yet clear what needs to be established to show recklessness. Recklessness would probably be established where the defendant was shown to be trading on a local or overseas reputation of the trade mark.

I17. Anecdotal evidence suggests that an average penalty of approximately A$1,000 is imposed when offences are proved. As in New Zealand, the Australian Police are under-resourced and are unable to act promptly to prosecute offences under intellectual property law. However increasing use is now made of the offences under the Trade Marks Act, particularly because of the ease of establishing registered trade marks.

I18. The Australian Trade Practices Act has provisions similar to those in the New Zealand Fair Trading Act in relation to misleading and deceptive conduct and false representations.

I19. The Australian Copyright Act and Trade Marks Act provide for border protection measures similar to those in New Zealand.

I20. In addition the Australian Customs takes action of its own volition under the Commerce (Trade Descriptions) Act 1905, which, in conjunction with the Australian Customs Act 1901, empowers the Customs to take action against imported goods which bear a false trade description.

I21. A "trade description" is defined as:

Any description, statement, indication or suggestion, direct or indirect;

1. as to the nature, number, quantity, quality, purity, class, grade, measure, gauge, size or weight of the goods; or
2. as to the country or place in or at which the goods were made or produced; or
3. as to the manufacturer or producer of the goods or the person by whom they were selected, packed, or in any way prepared for the market; or
4. as to the mode of manufacturing, producing, selecting, packing, or otherwise preparing the goods; or
5. as to the material or ingredients of which the goods are composed, or from which they are derived; or
6. as to the goods being the subject of an existing patent, privilege or copyright and includes a Customs entry relating to the goods; and any mark which according to the custom of the trade or common repute is commonly taken to being an indication of any of the above.

I22. A "false trade description" is defined as:
"A trade description which, by reason of anything contained in it or omitted from it, is false or likely to mislead in a material respect regarding the goods to which it is applied".

I23. The Commerce (Trade Descriptions) Act empowers Customs to take action including seizure of the goods; forfeiture to the Crown; fines of up to $A10,000; and a discretion to return goods to the importer where the goods were not knowingly imported in contravention of the Act and the false trade description is corrected and the costs of seizure are paid.

I24. Generally civil remedies in Australia are the same as in New Zealand.