What are the criminal offences relating to trade marks?
Broadly speaking, trade marks are defined as signs capable of being represented graphically and thus giving a product or service an identity; They are usually registered by businesses and used to give both the clients and customers an identity that they can resonate with. Once it has been registered, no one can simply pass it off as their own brand symbol.
Misuse of Trade Mark
There are several criminal offences relating to trade marks. The first of which is counterfeiting a trade mark. That includes makes a sign identical to or so nearly resembling a registered trade mark as to be calculated to deceive and falsify a genuine registered trade mark, without consent of the proprietor of the registered trade mark.
For instance, if you open a new fast-food restaurant using the McDonald’s logo, you could be guilty of counterfeiting a registered trade mark. You will be liable for a fine not exceeding $100,000 or a prison term of up to 5 years of both.
Another possible criminal offence is falsely applying a registered trade mark to goods or services. This means applying sign likely to be mistaken for that trade mark to the goods or service. Even if you use the logo in an advertisement or company document in any medium, you can still be considered to have committed the offence.
For example, if you own a marketing company called Push and Grow (P&G), and you use the Procter and Gamble logo on any of your advertisements or company documents, you will be deemed to have committed an offence.
Furthermore, if you apply a registered trademark on a product that you make or sell, you will also be guilty of the above-mentioned offence. The sign shall be deemed applied to the goods as long as it is applied to any covering, label, reel or thing in or with which the goods are sold, offered or exposed for sale or had in possession for a purpose of trade or manufacture.
To put it in layman’s terms, if you design a bag and put a Hermes logo on it, you are deemed to have committed the above-mentioned offence. Both the offences will attract a fine not exceeding $100,000 or a prison term of up to 5 years of both.
Abetting a Trade Mark Offence
In fact, even making or possessing an article for the purpose of committing a trade mark offence is also punishable by law. Putting it simply, any person who makes an article specifically designed or adapted for making copies of a registered trade mark or a sign likely to be mistaken for that trade mark or possesses such an article shall be guilty of a criminal offence.
If you are found guilty of such an offence, you may be liable to a fine not exceeding $100,000 or a prison term of up to 5 years of both.
For instance, if you create or design a counterfeit Hermes logo which can be easily put on a product and you distribute or sell it for a fee, then you can be guilty of a criminal offence.
Sale of Counterfeit Goods
Contrary to popular belief, importing or selling counterfeit goods from abroad constitutes a criminal offence. Section 49 of the Trade Marks Act states that anyone who sells, imports or possesses counterfeit goods for the purpose of trade or manufacture shall be guilty of a criminal offence that attracts a fine not exceeding $10,000 for each goods or thing to which the trade mark is falsely applied (but not exceeding in the aggregate $100,000) or a prison term of up to 5 years of both.
However, if he can prove that he has taken all reasonable precautions against committing an offence under this section or had no reason to suspect the authenticity of the mark, he will not be liable. To put it simply, if he can prove that he has acted innocently, he will not be criminally liable.
For instance, if you import some fake Prada bags from a street-side stall in China, and subsequently sell them in Singapore, you can be criminally liable. However, if you buy a Prada bag from a high-end retail boutique in Shanghai for the purpose of resale and the Prada bag is subsequently established as a counterfeit, you may not be guilty of a criminal offence as it would have been unlikely of you to suspect that it was a fake.
Falsely Representing a Trade Mark as Registered
Anyone that falsely represents that a mark is a registered trade mark or makes false representation as to the goods or services for which the trademark is registered shall be liable to a fine not exceeding $10,000 on conviction. Essentially, what this clause is saying is that if you have a mark for your pancakes called JustPancakes® and you claim that it is registered when it is not, you will be liable to a fine not exceeding $10,000.
Trade mark registration is by classes. There are altogether 45 classes of goods and services, and the trade mark should be registered in a class appropriate for the business. If you want to introduce a new line of product of services not covered by the trade mark, you will have to do an amendment filing to expand the scope of protection offered by the registration.
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