Part 15OFFENCES

PART 15—OFFENCES Falsifying etc. a registered trade mark 154.(1) If a person, knowing that a trade mark is registered, falsifies or unlawfully removes a representation of the trade mark applied to any goods, or in relation to any goods or services, dealt with or provided in the course of trade, the person is guilty of an offence punishable on conviction by imprisonment not exceeding 2 years. (2) A person falsifies a representation of a registered trade mark if the person:- (a) alters or defaces it; or (b) makes any addition to it; or (c) partly removes, erases or obliterates it; without the permission of the registered owner, or a registered user, of the trade mark and without being required or authorised to do so by this Act, a direction of the Registrar or an order of a court. (3) A person unlawfully removes a representation of a registered trade mark if the person removes it: (a) without the permission of the registered owner, or a registered user, of the trade mark; and (b) without being required or authorised to do so by this Act, a direction of the Registrar or an order of a court. (4) In a prosecution for an offence against subsection (1), if having regard to: (a) a person’s abilities, experience, qualifications and other attributes; and (b) all the circumstances surrounding the alleged contravention of that subsection; the person ought reasonably to have known that the trade mark is a registered trade mark, the person is taken to have known that the trade mark is a registered trade mark. Falsely applying a registered trade mark 155.(1) A person must not falsely apply a representation of a registered trade mark to goods, or in relation to goods or services, dealt with or provided in the course of trade. (2) A person falsely applies a representation of a registered trade mark to goods, or in relation to goods or services if the person applies a representation of the trade mark or of a sign substantially identical with it to the goods or in relation to the goods or services: (a) without the permission of the registered owner, or of a registered user, of the trade mark; and (b) without being required or authorised to do so by this Act, a direction of the Registrar or an order of a court. Manufacture and possession of die etc. for use in commission of offence 156.(1) A person must not: (a) make a die, block, machine or instrument; or (b) draw, or program a computer or other device to draw, a representation of a registered trade mark or part of a registered trade mark; for the purpose of its being used for, or in the course of, committing an offence against section 154 or 155. (2) A person must not have in his or her possession, or dispose of: (a) a die, block, machine or instrument; or (b) a computer, or other device, programmed to draw a representation of a registered trade mark; or (c) a representation of a registered trade mark or part of a registered trade mark; for the purpose of its being used for, or in the course of, committing an offence against section 154 or 155. Selling etc. goods with false marks 157.(1) A person must not: (a) sell goods; or (b) expose goods for sale; or (c) have goods in his or her possession for the purpose of trade or manufacture; or (d) import goods into Australia for the purpose of trade or manufacture; if the person knows that: (e) a falsified representation of a registered trade mark is applied to them; or (f) a representation of a registered trade mark has been unlawfully removed from them; or (g) a representation of a registered trade mark is falsely applied to them. (2) A person contravening subsection (1) is guilty of an offence punishable on conviction by: (a) a fine not exceeding 5 penalty units for each item of goods to which the offence relates; or (b) imprisonment for a period not exceeding 2 years; or (c) by both a fine and a term of imprisonment. (3) The total fine imposed on a person convicted of an offence may not exceed 120 penalty units. (4) In a prosecution for an offence against subsection (1), if, having regard to: (a) a person’s abilities, experience, qualifications and other attributes; and (b) all the circumstances surrounding the alleged contravention of that subsection; the person ought reasonably to have known that the goods are goods of a kind referred to in that subsection, the person is taken to have known that the goods were goods of that kind. Aiding and abetting offences 158.(1) If a person, by engaging in any conduct outside Australia: (a) aids, abets, counsels or procures; or (b) is in any way, directly or indirectly, knowingly concerned in, or party to; the doing of an act in Australia that is an offence against this Act, the person is taken to have committed that offence and is punishable accordingly. (2) Subsection (1) does not affect the operation of section 5 of the Crimes Act 1914. False representations regarding trade marks 159.(1) A person must not make a representation to the effect that a trade mark is a registered trade mark unless the person knows, or has reasonable grounds to believe, that the trade mark is registered in Australia. (2) A person must not make a representation to the effect that a part of a registered trade mark is registered as a trademark unless the person knows, or has reasonable grounds to believe, that that part is registered as a trade mark in Australia. (3) A person must not make a representation to the effect that a trade mark is registered in respect of goods or services unless the person knows, or has reasonable grounds to believe, that the trade mark is registered in Australia in respect of those goods or services. (4) A person must not make a representation to the effect that the registration of a trade mark gives exclusive rights to use the trade mark in circumstances in which, having regard to conditions or limitations entered in the Register, the registration does not give those rights unless the person has reasonable grounds to believe that the registration does give those exclusive rights. (5) For the purposes of this section, the use in Australia in relation to a trade mark: (a) of the word “registered”; or (b) of any other word or any symbol referring (either expressly or by implication) to registration; is taken to be a representation that the trade mark is registered in Australia in respect of the goods or services in relation to which it is used except if the trade mark is registered in a country other than Australia in respect of those goods or services and: (c) the word or symbol by itself indicates that the trade mark is registered in that other country or a country outside Australia; or (d) the word or symbol is used, together with other words or symbols of the same or a bigger size, to indicate that the trade mark is registered in that other country or a country outside Australia; or (e) the word or symbol is used in relation to goods that are to be exported to that country. Penalty: 60 penalty units. Note: The Reader’s Guide gives information about penal ties (see the paragraphs under the subheading Crimes Act 1914). False entries in Register etc. 160. A person must not knowingly or recklessly: (a) make a false entry in the Register; or (b) cause a false entry to be made in the Register; or (c) tender in evidence a document that falsely purports to be a copy of, or an extract from, an entry in the Register or a document in the Trade Marks Office. Disobeying summons etc. 161.(1) A person who: (a) has been summonsed to appear as a witness before the Registrar; and (b) has been offered payment of reasonable expenses; must not, without lawful excuse, fail to appear in answer to the summons. Penalty: 10 penalty units. (2) A person who: (a) has been required by the Registrar to produce a document or any other thing; and (b) has been offered payment or reasonable expenses; must not, without lawful excuse, fail to produce the document or thing. Penalty: 10 penalty units. Refusing to give evidence etc. 162. A person appearing before the Registrar as a witness must not, without lawful excuse, refuse: (a) to be sworn or to make an affirmation; or (b) to answer questions that he or she is lawfully required to answer; or (c) to produce any document or thing that he or she is lawfully required to produce. Penalty: 30 penalty units. Unauthorised persons not to act in trade mark matters 163. A person must not ask, or be given, any payment or other reward for: (a) applying for, or obtaining, on behalf of another person: (i) the registration of a trade mark; or (ii) the making of any entry in the Register; or (iii) the amendment, cancellation, removal or restoration of any entry in the Register; or (b) preparing, or causing to be filed in accordance with this Act, a document necessary for another person to obtain or oppose: (i) the registration of a trade mark; or (ii) the making of an entry in the Register; or (iii) the amendment, cancellation, removal or restoration of any entry in the Register; or (c) giving advice about the validity of the registration of a trade mark or the infringement of a trade mark; unless the person is: (d) a lawyer; or (e) a registered patent attorney; or (f) a person permanently employed by, and only by, that other person; or (g) a person referred to in paragraph 135(1)(h) or (i) of the repealed Act. Penalty: 30 penalty units. Unregistered persons 164.(1) A person must not carry on business or practise as a trade marks attorney, trade marks agent or agent for obtaining the registration of trade marks unless the person is: (b) a registered patent attorney; or (c) a person referred to in paragraph 135(1 )(h) or (i) of the repealed Act. Penalty: 30 penalty units. (2) The members of a partnership must not carry on business or practise as trade marks attorneys or trade marks agents or agents for obtaining the registration of trade marks unless each member is: (b) a registered patent attorney; or (c) a person referred to in paragraph 135(1)(h) or (i) of the repealed Act. Penalty: 30 penalty units. (3) A person must not describe himself or herself, or hold himself or herself out, or permit himself or herself to be described or held out, as: (a) a trade marks attorney; or (b) a trade marks agent; or (c) an agent for obtaining the registration of a trade mark; unless the person is a registered patent attorney or a lawyer. Penalty: 30 penalty units. (4) The members of a partnership must not describe themselves, or hold themselves out, or permit themselves to be described or held out, as: (a) trade marks attorneys; or (b) trade marks agents; or (c) agents for obtaining the registration of a trade mark; unless each member is a registered patent attorney or a lawyer. Penalty: 30 penalty units. (5) If: (a) a company is found guilty of an offence against this section; and (b) a director, manager, secretary or other officer of the company has knowingly been a party to the offence; the director, manager, secretary or officer is guilty of an offence punishable, on conviction, by a fine not exceeding 30 penalty units. (6) In spite of section 15B of the Crimes Act 1914, a prosecution for an offence against this section may be started at any time within 5 years after the offence was committed. (7) For the purposes of this section, a person is taken to carry on business or practise, as attorney or a trade marks agent if the person undertakes in Australia to do, for gain, any or all of the acts referred to in paragraph 163(a). (b) or (c). Note: The Reader’s Guide gives information about penalties (see the paragraphs under the sub heading Crimes Act 1914). False representation about Trade Marks Office 165. A person: (a) must not: (i) place, or allow to be placed, on the building in which his or her office is situated; or (ii) use when advertising his or her office or business; or (iii) place on a document, as a description of his or her office or business; the words “Trade Marks Office” or “Office for registering trade marks”, or words of similar import (whether alone or together with other words); or (b) must not use in any other way, in connection with his or her business, words that would reasonably lead other persons to believe that his or her office is, or is officially connected with, the Trade Marks Office. Penalty: 30 penalty units. Registrar etc. not to prepare documents etc. 166. The Registrar, a Deputy Registrar or an employee must not: (a) prepare, or help prepare, a document to be filed under this Act; or (b) search the records of the Trade Marks Office; unless required or authorised to do so by this Act, a written direction of the Registrar or an order of a court. Penalty: 10 penalty units. Note: The Reader’s Guide gives information about penalties (see the paragraphs under me subheading Crimes Act 1914). Forfeiture orders under the Proceeds of Crime Act 1987 167. If a person other than the Director of Public Prosecutions has instituted proceedings for the trial of another person in respect of an indictable offence against this Part, Division 2 of Part II of the Proceeds of Crime Act 1987 applies as if a reference in that Division to the Director of Public Prosecutions includes a reference to the person who has instituted the proceedings. Conduct of directors, servants and agents 168.(1) This section applies for the purposes of a prosecution for: (a) an offence under this Act; or (b) an offence under section 5, 6, 7 of 7a of subsection 86(1) of the Crimes Act 1914 that relates to this Act. (2) If it is necessary to establish the state of mind of a company in relation to particular conduct, it is sufficient to show: (a) that the conduct was engaged in by a director, servant or agent of the company within the scope of his or her actual or apparent authority; and (b) that the director, servant or agent had the state of mind. (3) Any conduct engaged in on behalf of a company by a director, servant or agent of the company within the scope of his or her actual or apparent authority is taken to have been engaged in also by the company, unless it establishes that it took reasonable precautions and exercised due diligence to avoid the conduct. (4) If it is necessary to establish the state of mind of a person other than a company in relation to particular conduct, it is sufficient to show: (a) that the conduct was engaged in by a servant or agent of the person within the scope of his or her actual or apparent authority; and (b) that the servant or agent had the state of mind. (5) Any conduct engaged in on behalf of a person other than a company by a person’s servant or agent within the scope of his or her actual or apparent authority is taken to have been engaged in also by the person, unless the person establishes that he or she took reasonable precautions and exercised due diligence to avoid the conduct. (6) If: (a) an individual is convicted of an offence under this Act; and (b) the individual would not have been convicted of the offence but for subsections (4) and (5); the individual is not liable to be punished by imprisonment for that offence. (7) In this section: (a) a reference to the state of mind of a person includes a reference to: (i) the knowledge, intention, opinion, belief or purpose of the person; and (ii) the person’s reasons for the intention, opinion, belief or purpose; and (b) a reference to a director of a company includes a reference to a constituent member of a body corporate incorporated for a public purpose by a law of the Commonwealth, of a State or of a Territory; and (c) a reference to engaging in conduct includes a reference to failing or refusing to engage in conduct.