Intellectual Property Law Update - Additional damages under s 126(2) TMA can be retrospective

Intellectual Property
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Back in June, Perram J gave judgment against a kebab wholesaler for the infringement of a trade mark owned by Halal Certification Authority Pty Ltd, a company in the business of certifying food as being compliant with the Islamic rules relating to the preparation of food.

His Honour made various orders including that the parties agree on a form of corrective advertising.

He also awarded additional damages of $91,000 pursuant to s 126(2) of the TMA. This was the first time this provision had been successfully applied in the Federal Court.

Section 126(2) TMA came into effect on 15 April 2013.

After judgment, the respondent applied to vary the order for additional damages on the basis that some of the infringing activity had occurred before s 126(2) came into force.

Applications to vary orders are made pursuant to Division 39 of the Federal Court Rules 2011. Orders which have been entered (as these had) can only be varied if they fall into one of the categories set out in r 39.05 which includes slips, clerical mistakes, orders which do not reflect the intention of the Court and interlocutory orders.

The respondent contended that the order for additional damages was interlocutory because the form of the corrective advertising had not been agreed and therefore the rights of the parties had not been finally determined.

Perram J agreed and concluded that the orders were interlocutory for the purposes of r 39.05. That opened the possibility of varying the orders. His Honour, however, declined to exercise his discretion to do so.

First, the point was not argued at trial.

Secondly, s 126(2) permits an award of damages for conduct prior to its commencement because it is a procedural (as opposed to a substantive) provision. While, as a general rule, statutes are not construed to have retrospective operation, there is an exception for those having only procedural effects. That is, the nature of a procedural rule may be that it will often apply to the past. Despite some conflicting authority, Perram J considered that the addition by statute of a new remedy to facts which were already actionable is “purely procedural.”

Accordingly, the additional damages of $91,000 was left unchanged.

See judgment here.

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Benjamin Gardiner Headshot

Ben Gardiner KC practises primarily in intellectual property litigation

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