Unauthorised use of trademarks
Recently, the Halal Certification Authority brought a suit in the Federal Court for interference with its rights as per the Trade Marks Act 1995. At the heart of the matter was the issue of a meat distributor falsifying the registered certification trademark of Halal Certification Authority.
Preventive Measures
Principals of Kebab Wholesalers Pty LTD, (the Respondent), were charged with knowingly breaching Australian Consumer Law (ACL) by distributing products with false trademark. The Court and the Claimants were particularly focused on whether the involved parties had 'actual knowledge' of all elements of the breach. The Court found this question crucial in deciding the kind of penalty that would apply. Individuals who were not found to have taken part 'knowingly' were spared having to defend themselves in court, including one of the owners of a kebab shop who took instant action by removing the false certificates when he was notified by the lawyers acting for Halal Certification Authority.
The key players in charge of the kebab shops seemed to have not been aware of the false nature of the displayed certificates and therefore were not considered to have been ‘knowingly’ taking part. Those who did not co-operate and continued displaying the false certificates, even after they were asked to cease their actions, were faced with a lawsuit.
Remedies: Kebab Shops
The Federal Court considered an argument made by the Claimants but the final decision did not result in damages being paid out to the Halal Certification Authority with the feeling that justice has been serviced.
The Claimants argued damages were the appropriate remedy and they sought the cost of the licensing fee, which would have been paid annually ($5,000) for a genuine certification. The Court agreed with this view and suggested that it would be applicable where the guilty party was open to paying the licence fee, instead of wholly losing the advantage if being able to use the specific trademark.
Nevertheless, existing evidence pointed to the fact that the Respondents were unlikely to have paid for an annual licence fee and Federal Court decided to award nominal damages.
ACL only allows ‘actual’ damage to be compensated and unfortunately no award of damages resulted.
Remedies: Wholesale Distributor
The Federal Court again did not wish to rule with an iron fist when it came to deciding the fate of the wholesale distributor involved in the matter. The resulting ‘punishment’ was a mere slap on the wrist in the form of a nominal damage of $10 awarded to Halal Certification Authority.
Justice Perram pointed out that the goal here was not punitive punishment but instead a way to deter others from breaching ACL. Similarly, Justice Perram conceded that any additional damages were simply meant to act as a deterrent.
Furthermore, because it was not clear whether the meat available to consumers was not actually halal, as a result, the Halal Certification Authority had the daunting task of informing consumers via a newspaper post that the wholesaler did not have a certification.
We advise our readers be very careful in confirming that any product you are buying does not carry a false trademark. Extreme care must also be taken to ensure that it is impossible to replicate your trademark to avoid such problems in the future.
What Should I Do Next?
Contact us if you would like further legal advice on the unauthorized use of trademarks. Our lawyers at You Legal will be happy to assist you in whatever way we can.
* This blog is for general guidance only. Legal advice should be sought before taking action in relation to any specific issues.