Part XI of the Trade Marks Act (Chapter 385) is headed “Protection of Trade Marks”. It creates criminal offences that run alongside the civil action for infringement.
Section 75 — forgery and false application
(a) forges a registered trade mark; or
(b) falsely applies a registered trade mark to goods; or
(c) makes a die, block, machine or instrument for the purpose of forging, or of being used for forging, a registered trade mark; or
(d) disposes of or has in his possession such a die, block, machine or instrument for that purpose,
is guilty of an offence. Penalty: a fine not exceeding K2,000.00 or imprisonment for a term not exceeding three years.
Paragraphs (c) and (d) reach back up the supply chain to the person who makes or holds the tools of counterfeiting, without any need to prove that goods were actually marked.
It is a defence if the defendant proves that he acted without intent to defraud.
Section 76 — selling and possessing marked goods
A person who sells or exposes for sale, or has in his possession for sale or for the purpose of trade or manufacture, goods to which a forgery of a registered trade mark is applied, or to which a registered trade mark is falsely applied, is guilty of an offence. Penalty: a fine not exceeding K500.00.
(2) It is a defence if the defendant proves that he acted without intent to defraud.
Section 76 catches the retailer and the wholesaler, not just the counterfeiter. Note the width of “possession”: for sale or for the purpose of trade or manufacture. Goods in a warehouse or a container, not yet offered to anyone, are within the section.
| Section | Conduct | Maximum penalty |
|---|---|---|
| 75 | Forging a mark; falsely applying it; making, disposing of or possessing a die, block, machine or instrument for forging | K2,000.00 or 3 years |
| 76 | Selling, exposing for sale, or possessing for sale or trade goods bearing a forged or falsely applied mark | K500.00 |
| 77 | Knowingly importing such goods | K500.00 |
| 79 | Aiding, abetting, counselling or procuring, or being knowingly concerned in, an act outside the country which would be an offence here | K500.00 |
| 78 | On conviction under s 75, 76 or 77 — forfeiture to the State of all goods by means of or in relation to which the offence was committed | In addition to the punishment |
| 103 | Falsely representing that a mark is registered, or that a registration covers goods it does not | K200.00 |
Section 80 — when a mark is forged
(a) if, without the assent of the registered proprietor or of a registered user, or the authority of this Act, he makes the trade mark or a mark substantially identical with it; or
(b) if he falsifies a registered trade mark, whether by alteration, addition, effacement or otherwise.
In a prosecution for forging a trade mark, the burden of proving the assent of the registered proprietor or registered user lies on the defendant. The same rule applies to false application under section 81(5).
For anyone printing labels, packaging or point-of-sale material to a customer’s order, the practical consequence is direct: keep written authority on file. An oral assurance from the person who placed the order will not discharge the burden.
Note that paragraph (b) — falsifying by alteration, addition, effacement or otherwise — overlaps with section 54, which makes altering, partially removing, or adding damaging matter to a mark on goods a civil infringement where a prohibiting notice is in place.
Section 81 — when a mark is “applied”
If it is woven in, impressed on, worked into, or annexed or affixed to the goods (s 81(2)); and where:
(a) it is applied to the goods themselves; or
(b) it is applied to a covering, label, reel or thing in or with which the goods are sold, exposed, or had in possession for trade or manufacture; or
(c) it is used in a manner likely to lead to the belief that it refers to, describes or designates the goods; or
(d) it is used in a sign, advertisement, invoice, wine list, catalogue, business letter, business paper, price list or other commercial document, and goods are delivered to a person on a request or order made by reference to the mark as so used.
Section 81(1) defines “covering” to include a stopper, glass, bottle, vessel, box, capsule, case, frame or wrapper, and “label” to include a band or ticket.
A registered mark is deemed to be falsely applied to goods if, without the assent of the registered proprietor or of a registered user, or the authority of this Act, the mark or a mark substantially identical with it is applied to the goods.
It reaches the trader who never marks the goods at all, but takes orders by reference to the brand — a price list or catalogue offering the branded product, followed by delivery of something else. The mark is then deemed applied to the goods delivered.
Using the criminal and civil routes together
| Part XI offences | Section 53 infringement | |
|---|---|---|
| Test | Forged or falsely applied — the mark or one substantially identical | Substantially identical or deceptively similar |
| Mental element | Defence of no intent to defraud, proved by the defendant; s 77 requires knowingly | None — strict |
| Outcome | Fine or imprisonment, plus forfeiture of the goods (s 78) | Injunction, and damages or an account (s 56) |
| Who acts | The prosecuting authorities | The proprietor, or a registered user under s 70(1) |
The criminal route is narrower — it does not reach merely deceptively similar marks — but it delivers something the civil route does not: forfeiture of the goods to the State under section 78. Against a counterfeiter with no assets, that is often the only meaningful outcome.
Section 79(2) preserves the operation of the Criminal Code Act (Chapter 262), under which fraud and false pretence offences may carry considerably heavier penalties than the Part XI maxima.
Sources
- Trade Marks Act (Chapter 385) — ss 53, 54, 56, 70, 75–81, 103
- Criminal Code Act (Chapter 262)
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.