N. United Kingdom
N1. The equivalent United Kingdom legislation is the Copyright Designs and Patents Act 1988.
N2. Its provisions in relation to criminal law are similar to those in New Zealand, and indeed the New Zealand Copyright Act 1994 was to a large extent based on this United Kingdom Act.
N3. One difference is that under section 107 of the United Kingdom Copyright Act (otherwise equivalent to New Zealand section 131) an offence is committed not only where it is established that the defendant knew the work was an infringing copy, but the offence is committed if it is established merely that the defendant "has reason to believe" that this is the case. The corresponding New Zealand provision in section 131 requires it to be established that the person "knows".
N4. Another difference is that the penalties for conviction include imprisonment for a term not exceeding six months if tried summarily, or up to 2 years if tried by a Crown Court, whereas the term is merely three months under the New Zealand Act.
N5. The United Kingdom Act has one additional provision not provided for in New Zealand. Section 100 of the United Kingdom Copyright Designs and Patents Act 1988 provides as follows:
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| Right to seize infringing copies and other articles |
| 100 | (1) | An infringing copy of a work which is found exposed or otherwise immediately available for sale or hire, and in respect of which the copyright owner would be entitled to apply for an order under section 99, may be seized and detained by him or a person authorised by him.
The right to seize and detain is exercisable subject to the following conditions and is subject to any decision of the court under section 114.
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| | (2) | Before anything is seized under this section notice of the time and place of the proposed seizure must be given to a local police station. |
| | (3) | A person may for the purpose of exercising the right conferred by this section enter premises to which the public have access but may not seize anything in the possession, custody or control of a person at a permanent or regular place of business of his, and may not use any force. |
| | (4) | At the time when anything is seized under this section there shall be left at the place where it was seized a notice in the prescribed form containing the prescribed particulars as to the person by whom or on whose authority the seizure is made and the grounds on which it is made. |
| | (5) | In this section -
"premises" includes land, buildings, moveable structures, vehicles, vessels, aircraft and hovercraft; and
"prescribed" means prescribed by order of the Secretary of State. |
| | (6) | An order of the Secretary of State under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament. |
N6. This is a useful provision to deal with street vendors and other persons dealing in counterfeit product other than from a permanent or regular place of business. There is a similar provision in Section 196 in relation to illicit recordings.
N7. A recent law change provides that anyone convicted of more than one offence of counterfeiting or infringing copyright from 1995 is to be required to account for the legal origin of all their property within the last 6 years. If they cannot do so, they may lose all their assets.
N8. The corresponding United Kingdom trade mark legislation is the Trade Marks Act 1994, and section 92 provides:
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| Unauthorised use of trade mark, etc, in relation to goods |
| 92. | (1) | A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor - |
| | | (a) | applies to goods or their packaging a sign identical to, or likely to be mistaken for, a registered trade mark, or |
| | | (b) | sells or lets for hire, offers or exposes for sale or hire or distributes goods which bear, or the packaging of which bears, such a sign, or |
| | | (c) | has in his possession, custody or control in the course of a business any such goods with a view to the doing of anything, by himself or another, which would be an offence under paragraph (b). |
| | (2) | A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor - |
| | | (a) | applies a sign identical to, or likely to be mistaken for, a registered trade mark to material intended to be used - |
| | | | (i) | for labelling or packaging goods, |
| | | | (ii) | as a business paper in relation to goods, or |
| | | | (iii) | for advertising goods, or |
| | | (b) | uses in the course of a business material bearing such a sign for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods, or |
| | | (c) | has in his possession, custody or control in the course of a business any such material with a view to the doing of anything, by himself or another, which would be an offence under paragraph (b). |
| | (3) | A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor - |
| | | (a) | makes an article specifically designed or adapted for making copies of a sign identical to, or likely to be mistaken for, a registered trade mark, or |
| | | (b) | has such an article in his possession, custody or control in the course of a business. |
| | knowing or having reason to believe that it has been, or is to be, used to produce goods, or material for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods. |
| | (4) | A person does not commit an offence under this section unless - |
| | | (a) | the goods are goods in respect of which the trade mark is registered, or |
| | | (b) | the trade mark has a reputation in the United Kingdom and the use of the sign takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the trade mark. |
| | (5) | It is a defence for a person charged with an offence under this section to show that he believed on reasonable grounds that the use of the sign in the manner in which it was used, or was to be used, was not an infringement of the registered trade mark. |
| | (6) | A person guilty of an offence under this section is liable - |
| | | (a) | on summary conviction to imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum, or both; |
| | | (b) | on conviction on indictment to a fine or imprisonment for a term not exceeding ten years, or both. |
N9. Section 93 provides that it is the duty of local authorities to "enforce within their area the provisions of section 92". Trading Standards Officers of local authorities have powers under the United Kingdom Trade Descriptions Act 1968 to make test purchases and to enter premises and inspect and seize goods and documents. This statute provides that trade marks may constitute false trade descriptions.
N10. In practice such authorities have been reasonably successful in taking enforcement action and securing convictions and enjoy good co-operation with trade mark owners. Preliminary figures (from a survey of 80 percent of local authorities) suggested that items seized had a total value of approximately NZ$250 million (equivalent genuine value), with 459 convictions reported, in a recent 12 month period.
N11. In a recent series of raids by one local authority, an estimated NZ$60 million of counterfeit clothing was seized.
N12. As will be seen from the above penalties may range from imprisonment for terms from six months to ten years as well as a fine. There is also provision for forfeiture of counterfeit goods located as a result of such investments and prosecution.
N13. The United Kingdom Copyright Designs and Patents Act and Trade Marks Act also provide for Customs seizure along the lines available in New Zealand.
N14. Civil remedies are available in much the same manner as in New Zealand.
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