T. TRIPS Agreement
T1. This is the acronym for the GATT Agreement on Trade Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods. This was concluded in December 1993 as part of the world trade accord in the General Agreement on Tariffs and Trade (GATT). This provides obligations upon New Zealand and other members to provide certain minimum standards on intellectual property law.
T2. Article 61 of the TRIPS Agreement provides for criminal procedures, and is as follows:
"Members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trade mark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent consistently with the level of penalties applied for crimes of a corresponding gravity. In appropriate cases remedies available shall also include the seizure, forfeiture and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offence. Members may provide for criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular where they are committed wilfully and on a commercial scale."
T3. The New Zealand Copyright Act 1994 appears to comply with the requirements of Article 61.
T4. However as noted above there are no express criminal provisions for wilful trade mark counterfeiting on a commercial scale. There are provisions in the Fair Trading Act 1953 in relation to forgery, but the existing penalties under that Act are not really sufficient to provide a deterrent.
T5. It would be desirable for the Trade Marks Act to have express provisions for criminal offences for wilful infringement of at least registered trade marks, a long the lines of those for example in Australia and the United Kingdom.
T6. Apart from providing for offences for selling goods bearing counterfeit trade marks, the Trade Marks Act should also provide for seizure, forfeiture and destruction of counterfeit goods, and any materials and implements the predominant use of which has been in the commission of such offences. Provisions in the Copyright Act could well be a suitable starting point for provisions to be put into the Trade Marks Act in relation to use of a infringing trade marks.
T7. Article 46 of the TRIPS Agreement provides as follows:
"In order to create an effective deterrent to infringement, the judicial authorities shall have the authority to order that goods that they have found to be infringing be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or, unless this would be contrary to existing constitutional requirements, destroyed. The judicial authorities shall also have the authority to order that materials and implements the predominant use of which has been in the creation of the infringing goods be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to minimise the risks of further infringements. In considering such requests, the need for proportionality between the seriousness of the infringement and the remedies ordered as well as the interests of third parties shall be taken into account. In regard to counterfeit trade mark goods, the simple removal of the trade mark unlawfully affixed shall not be sufficient, other than in exceptional cases, to permit release of the goods into the channels of commerce."
T8. It is therefore vital that New Zealand copyright and trade mark law meet the minimum standards set out in the Trips Agreement.
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