Section 56 of the Trade Marks Act (Chapter 385) states the relief available, and the surrounding sections make it workable.
Section 56 — injunction, and damages or account
The relief which a Court may grant in an action or proceeding for infringement of a registered trade mark includes an injunction, subject to such terms (if any) as the Court thinks fit, and, at the option of the plaintiff, either damages or an account of profits.
Three points of construction matter.
- “Includes”. The list is not exhaustive. The Court’s general powers — declarations, orders for delivery up or destruction of infringing material, interlocutory relief — are not displaced.
- “At the option of the plaintiff”. The election between damages and an account belongs to the plaintiff, not the Court. But it is an election: you may have one or the other, not both.
- “Subject to such terms as the Court thinks fit”. An injunction may be qualified — a sell-off period for existing stock, a requirement to add a distinguishing element, or a limitation matching the conditions on the registration.
| Damages | Account of profits | |
|---|---|---|
| Measure | Your loss | The defendant’s gain |
| Typical components | Lost sales and margin; price depression; damage to reputation; a reasonable royalty for the use | Revenue from the infringing goods, less the costs properly attributable to producing them |
| Evidence needed | Your own sales and financial records | The defendant’s records — usually obtained by discovery |
| Better when | You can show diverted sales or a going royalty rate | The defendant sold a great deal, or your own loss is hard to quantify |
The election is normally made once the defendant’s trading figures are known through discovery. Plead both in the alternative and elect afterwards. Note also section 53(2): on a Part B mark, if the defendant establishes that his use is not likely to deceive or cause confusion, no relief at all is granted — unless the infringement is one under section 54.
Section 58 — where to sue
Jurisdiction is conferred on the Court — defined in section 1 as the National Court — to hear and determine an action or proceeding for infringement, but this section does not deprive another court of jurisdiction which it possesses to hear and determine such an action.
The saving matters in practice. A small claim may be within the ordinary civil jurisdiction of a District Court, which is faster and far cheaper. But claims for an injunction, and any challenge to the validity of the registration — section 13 rectification is expressly a matter for the Court — belong in the National Court.
Section 90(4) confers jurisdiction on the Court in the same terms for a groundless threats action, again without depriving another court of jurisdiction it possesses.
Proving the registration, and the market
| Provision | Effect |
|---|---|
| s 9 | The Registrar issues certified copies, extracts and certificates |
| s 10(2) | A certified copy or extract is admissible in all courts without further proof or production of the original |
| s 4 | Courts take judicial notice of the Registrar’s signature and seal |
| s 50 | The original registration, and any registered assignment, are deemed valid unless the contrary is shown |
| s 57 | Evidence is admissible of the usages of the trade concerned and of any relevant trade mark, trade name or get-up legitimately used by other persons |
| s 92 | In a pleading or proceeding it is not necessary to set out a copy or description of the mark — it may be identified by its registered number |
Section 57 cuts both ways. A plaintiff uses it to show that its mark stands apart in the trade; a defendant uses it to show that a shared element is common to the market and carries little weight in the comparison.
Who may sue, and against whom
- The registered proprietor, on the section 49(1) right.
- A registered user, indirectly: under section 70(1), subject to any agreement with the proprietor, the user may call on the proprietor to sue, and if the proprietor refuses or neglects for two months, may sue in his own name as if he were the proprietor, joining the proprietor as a defendant. A proprietor so joined is not liable for costs unless he enters an appearance and takes part (s 70(2)).
- Under section 71, Part IX does not confer on a registered user an assignable or transmissible right to use the mark — so a sub-licensee cannot sue in its own right.
- Joint proprietors under section 27 sue together; the Act treats their rights as those of a single person.
Costs, and the section 89 certificate
In an action or proceeding in which the validity of a registration is unsuccessfully disputed, the Court may certify that validity came in question. If it does, in a subsequent proceeding in which validity is disputed, the proprietor, on obtaining a final order or judgement in his favour, is entitled — unless the court otherwise directs — to full costs, charges and expenses as between solicitor and client.
- Ask for the certificate whenever you defeat a validity challenge. It is a standing deterrent, and worth stating in later correspondence.
- Security for costs may be ordered against an opponent not residing or carrying on business in the country (s 42), and against such an appellant (s 101).
- The Registrar’s costs in court proceedings are in the court’s discretion, but the Registrar shall not be ordered to pay another party’s costs (s 95).
- Costs awarded by the Registrar may be recovered as a debt in a court of competent jurisdiction (s 88).
The criminal alternative
Civil relief is not the only route. Part XI creates offences of forging or falsely applying a registered mark, and of selling or importing goods bearing such a mark — and under section 78 a person convicted under sections 75, 76 or 77 is liable, in addition to the punishment, to forfeit to the State all goods by means of or in relation to which the offence was committed.
Forfeiture removes the goods from the market in a way a damages award does not, which is why the two routes are often pursued together against counterfeiters.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 4, 9, 10, 13, 27, 42, 49, 50, 53–58, 70, 71, 78, 88–92, 95, 101; Part XI
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.