Preventing the importation and sale of counterfeit products is often associated with enforcing intellectual property (IP) rights, in particular registered trade marks and copyright.
However, clients should not forget the possibility of an action under sections 52 and 53 of the Trade Practices Act 1974 (Cth) (TPA).
TPA – sections 52 and 53
A corporation will breach the TPA if it:
engages in misleading or deceptive conduct (s.52); or
falsely makes representations as to sponsorship, affiliation or approval (s.53).
The importation and/or sale of counterfeit products can breach the TPA if packaging is similar to the original products.
Standing
Intellectual property statutes protect the private rights of IP owners. Consequently, it is usually only IP owners and, in certain circumstances, licensees which have standing to enforce infringements of IP.
In comparison, 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.
Distributors
Hall & Wilcox has recently acted for distributors against suspected counterfeit toys by relying on, amongst other things, sections 52 and 53 of the TPA. As distributors are unlikely to be licensees of IP and therefore not have standing under various IP statutes to enforce IP infringements, the TPA can be a very effective way for them to take action against suspected counterfeit products.
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