Enforcing Intellectual Property rights for counterfeit products under the Trade Practices Act
Generally intellectual property (IP) statutes protect the private rights of the intellectual property owners. Only in certain limited circumstances, do distributors or licensees have the right to enforce infringements of intellectual property.
A distributor should first check its licence or distribution agreement, which generally sets out a distributor's obligations to report infringements to the IP owner and to assist with any necessary enforcement action under the relevant IP legislation.
In addition, a distributor should not forget the possibility of making a claim under sections 52 and 53 of the Trade Practices Act 1974 (Cth ) (TPA). The importation and/or sale of counterfeit products may breach the TPA if packaging is similar to the original products.
Under the TPA, a corporation will breach the TPA if it:
- engages in misleading or deceptive conduct (s.52); or
- falsely makes representations as to among other things sponsorship, affiliation or approval (s.53).
Sections 52 and 53 of the TPA are consumer protection provisions. Therefore, anyone who has suffered loss as a result of the misleading or deceptive conduct can enforce breaches of these sections.
The TPA may be an effective way for a distributor to take action against suspected counterfeit products, if the owner is unable or unwilling to take action.
Sections 52 and 53 of the TPA only apply to corporations. However, equivalent state based laws may be accessed if the offender is not a corporation.
Each situation is different and the remedies available are specific to the particular facts of each case. It is always recommended you seek legal advice, but this is a helpful example of how to protect a distributor's IP rights.
For further information or advice on this topic, please contact Russell Morley, Senior Lawyer, by email at rmorley@talbotolivier.com.au.
