A Second Helping of Kebab

Additional Damages for Past Trade Mark Infringements

In June 2014 the Federal Court made its first award of additional damages for trade mark infringement under the ‘Raising the Bar’ amendments to the Trade Marks Act 1995 (TM Act). We reported on the original judgment in our 23 June 2014 alert, which you can find here.

Today, the Federal Court of Australia handed down another judgment in that case. This second judgement suggests that additional damages may also be available for trade mark infringements that occurred before 15 April 2013.

The conduct which was the subject of the award of additional damages occurred over the period August 2012 to September 2013. The amendment to the TM Act empowering the Court to award additional damages came into force on 15 April 2013.

The infringer sought a reduction of the amount of damages awarded on the basis that the additional damages should be confined to the conduct that occurred in the period after that amendment to the TM Act.

The Court noted that, “unless a statute otherwise suggests, it is not construed to have retrospective operation. On the other hand, it is sometimes said that there is an exception to this in the case of statutes said only to have procedural effects… A more accurate statement may be that procedural statutes apply, like other statutes, prospectively but that the nature of procedural regulation is such that it will often apply to events in the past.”

The Court was inclined to view the amendment to the TM Act as procedural in nature and therefore declined to change the award of damages.

In its original judgment, the Court stated that the purpose of the award of additional damages was to deter further infringement. That finding supports the proposition that an additional damages award for trade mark infringement is not punitive and therefore cannot be construed as having retrospective effect (which would thus remove the argument that it has been awarded to punish conduct that occurred prior to the amendment). In its second judgment the Court noted that it was not argued that the award of additional damages was punitive in effect and hence not to be construed as having retrospective effect.

To read the full case, please click here.

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