Lista de cuestiones sobre la observancia en el marco del párrafo 2 del artículo 63 del Acuerdo sobre los ADPIC - Ver detalles del documento

Australia

a) Procedimientos y recursos judiciales civiles

Under the Patents, Trade Marks and Designs Acts, the Federal Court of Australia and the Australian State and Territory Supreme Courts have jurisdiction over matters arising under these Acts. Under the Copyright Act, the Federal Court, or any other court of competent jurisdiction, has jurisdiction over matters arising under that Act. Appeals from the Federal Court or the Supreme Courts are heard by the full bench of the Federal Court or, if special leave is granted, by the High Court of Australia.

Infringement actions may be instituted by a copyright owner, exclusive licensee or performer under the Copyright Act, by the patent owner or exclusive licensee under the Patents Act, the trademark owner or authorized user under the Trademarks Act or the design owner under the Designs Act. Businesses and individuals are entitled to be, and usually are, represented by solicitors and barristers in legal actions to assert IPRs. An individual may represent themselves. There is no requirement for the right holder to appear in court if not called to give evidence.

The courts have the authority to order the production of documents in court as part of their inherent or statutory powers. Provisions also exist in several of the intellectual property acts which restate the authority. For example s.122(2) of the Patents Act 1990 states that on the application of either party, the court may make such order for the inspection of any thing in or on any vehicle, vessel, aircraft or premises, and may impose such terms and give such directions about the inspection, as the court thinks fit. Orders for discovery are used frequently in civil proceedings including in IPR matters.

By virtue of the courts’ powers, a party is entitled to obtain answers to interrogatories (written questions) and to inspect (by discovery) all documents which are not privileged. Confidentiality is protected by the following: - a party required to produce documents or answer interrogatories may only produce documents or answer questions which are relevant to the proceedings; - courts have a discretion to limit interrogatories, order that a person is not required to answer interrogatories or to refuse to order the production of documents which contain secret or confidential information; - the right of inspection of documents may be limited by the courts to persons such as legal representatives or experts. Courts can require documents which are claimed to be privileged or confidential to be produced to the court to be identified as such. For more detail, see Australia's answers to the questions of the US concerning protection of confidential information (question 6) as part of the review of legislation on patents, layout-designs of integrated circuits, undisclosed information and control of anti-competitive practices in contractual licences in the TRIPS Council in May 1997.2

Under the provisions of the Copyright Act, Patents Act, the Trade Marks Act and the Designs Act, and under their general jurisdiction, the courts may grant relief for infringement in the form of an interlocutory or permanent injunction and, at the option of the plaintiff, either damages or an account of profits. Under their general jurisdiction the courts have the powers to order a party to pay the legal costs of another party. The courts apply the rule that they may grant an interlocutory injunction if the court decides that there is a serious issue to be tried; if the risk of damage to the plaintiff if the injunction is not granted outweighs the risk of damage to the defendant if the injunction is granted; and if the plaintiff gives an undertaking to compensate the defendant if the injunction is later found by the court to be unjustified. A permanent injunction may be granted where the plaintiff establishes infringement. Provision is made in the Copyright, Patents, Trade Marks and Designs Acts for the award of damages for infringement. The courts have wide powers to award damages, or if the plaintiff prefers, an account of profits. Under the Copyright Act, the plaintiff cannot be awarded damages in the case of innocent infringement but is still entitled to an account of profits. Damages usually include the recovery of commercial losses associated with the infringement and an award of damages would normally be accompanied by an order for payment of all, or a proportion of, the legal and court costs arising from the case. Provisions of the Copyright Act, and the Trade Marks Act allow for the seizure of infringing goods or copies, and (in the case of the Copyright Act) the equipment used for making them, and delivery of the goods, copies or equipment to the right owner, the exclusive licensee or the performer, or their destruction. There is also a provision for disposal of forfeited goods or copies by the Australian Customs Service. Specific provision for delivery up is not included in the Designs or Patents Acts. However, the courts have an inherent (or statutory) equitable power to order defendants to deliver up goods made in contravention of the plaintiff's rights. The Trade Marks Act makes it an offence to manufacture or possess a die, etc., for use in the commission of a trademark offence. The Copyright and Designs Acts provide for the conversion and detention of infringing goods. That is, the copyright owner is entitled to treat the infringing articles and articles used to make them as his/her own. This provision is being amended in the Copyright Act to make the remedy discretionary. It has been recommended that the provision be removed from the Designs Act. The remedy may only be used when the infringement was clearly with knowledge of infringement on the part of the infringer. Separately, the Copyright Act permits application for an award of additional damages and its amount is to be determined by the court on its assessment of the flagrancy of the copyright infringement. The Trade Marks Act provides for the court to direct the disposal of counterfeit goods which have been seized by the Australian Customs Service. Under the Copyright Act, if the court directs that copies are forfeited to the Commonwealth, the copies must be disposed of as prescribed by regulations or as the Comptroller of Customs directs.

The courts have inherent and statutory authority to direct the defendant to provide information in response to questions put by the plaintiff. Under s.143(1) of the Trade Marks Act the Comptroller of the Australian Customs Service may ask the importer or agent of the importer to produce documents relating to the goods or to give information about the name and address of the person by whom, or to whom, the goods were consigned.

The Copyright, Patents, Trade Marks and Designs Acts allow that damages and an injunction may be sought for groundless threats of legal proceedings. An interlocutory injunction is typically granted only if the plaintiff gives an undertaking as to damages. If it is decided at trial that the injunction has been wrongly ordered, the court may order the unsuccessful plaintiff to pay damages to the defendant from the undertaking. If the determination that an injunction was wrongly ordered was made on appeal, the appeal court would have the general power to make an order for costs in favour of the party enjoined. If an obviously unfounded action is commenced against a person, and if that person suffers injury, the person may bring an action and, if successful, receive damages for abuse of process. Also, the Copyright, Trade Marks, Patents and Designs Acts provide that, in a case arising from a border seizure, if a court decides that there was not an infringement by importation and that the defendant has suffered damage by reason of the seizure, the court may order the objector to the importation (the plaintiff in the action), to pay compensation for damages arising since the proceedings were commenced. Under the Copyright and Trade Marks Acts, the Commonwealth is not liable for loss or damage suffered by a person because of the seizure, failure to seize, or the release of copies or goods. A legal practitioner or patent attorney is not liable to proceedings for actions done in his or her professional capacity on behalf of a client. Disciplinary measures do exist if the action contravened the code of professional conduct. Additionally, officials may be sued in their personal capacity if their actions were not taken in good faith in pursuance of their statutory responsibilities or if taken without legal authority. As a matter of practice the Government will indemnify officials if their action was taken in good faith in fulfilment of their duties.

The cost and length of a court case or legal proceedings depend on the nature of the individual case and the jurisdiction in which the case is heard. Consequently, the cost and duration vary considerably and are difficult to quantify.

b) Procedimientos y remedios administrativos

Australia's Copyright, Patents, Trade Marks and Designs Acts do not have provisions for administrative procedures that deal with merits or remedies in respect of infringement. Under the Patents, Trade Marks or Designs Acts, an appeal on a matter of law against a decision of the Commissioner or Secretary under one of those Acts must be made to a court. Administrative determinations are related to registration rather than infringement.

a) Medidas judiciales

Pre-trial injunctions or orders thatmaybe granted by the courts include interlocutory injunctions, Mareva injunctions and Anton Piller orders. The legal basis for injunctions is outlined in answer to question 5. The injunctions are initiated on application by the plaintiff to a court of competent jurisdiction. The Mareva injunction and the Anton Piller order were established through precedent in English case law. The Mareva injunction is intended to prevent any movement of the defendant's assets before the court's decision which would circumvent the court awarding damages. Mareva injunctions may be granted by the court if the plaintiff's case would otherwise be prejudiced and if it is just and convenient to do so, considering the interests of both the plaintiff and the defendant. Anton Piller orders allow the plaintiff to search the defendant's premises for documents or evidence which would demonstrate the infringement. Such an order would be granted if there were an extremely strong prima facie case, the potential damage to the plaintiff were serious, and if there were a real possibility that the goods or copies would otherwise be destroyed by the defendant. A range of conditions on the execution of the order and subsequent dealings with material seized are used to prevent possible injustice to the potential defendant. Except in the case of an interim injunction which restrains the defendant until a particular time, injunctions operate until trial or further order. All these orders derive either from the courts' equitable jurisdiction or from express statutory authority.

By its nature the Anton Piller order may be ordered ex parte. In cases of urgency, an injunction may be granted ex parte. Such orders in nearly every case require that the matter be returned to the court for further hearing at a specified date.

See the answer to question 10. Generally, the courts are reluctant to use this type of measure, especially the Mareva injunctions and Anton Piller orders. The orders usually require the attendance of the plaintiff's solicitor, limited but some notice of the attendance on the premises of third parties and provision for disputed documents (e.g. where there is a claim the documents are privileged from production such as those held by solicitors for litigation purposes) to be identified and held separately for later court determination of their status.

[Answer 10: Pre-trial injunctions or orders thatmaybe granted by the courts include interlocutory injunctions, Mareva injunctions and Anton Piller orders. The legal basis for injunctions is outlined in answer to question 5. The injunctions are initiated on application by the plaintiff to a court of competent jurisdiction. The Mareva injunction and the Anton Piller order were established through precedent in English case law. The Mareva injunction is intended to prevent any movement of the defendant's assets before the court's decision which would circumvent the court awarding damages. Mareva injunctions may be granted by the court if the plaintiff's case would otherwise be prejudiced and if it is just and convenient to do so, considering the interests of both the plaintiff and the defendant. Anton Piller orders allow the plaintiff to search the defendant's premises for documents or evidence which would demonstrate the infringement. Such an order would be granted if there were an extremely strong prima facie case, the potential damage to the plaintiff were serious, and if there were a real possibility that the goods or copies would otherwise be destroyed by the defendant. A range of conditions on the execution of the order and subsequent dealings with material seized are used to prevent possible injustice to the potential defendant. Except in the case of an interim injunction which restrains the defendant until a particular time, injunctions operate until trial or further order. All these orders derive either from the courts' equitable jurisdiction or from express statutory authority.]

Refer to question 8. In Australia, the usual rule is that costs follow the cause. That is, the successful party obtains an award of party-party costs from the unsuccessful party(ies). Depending on the circumstances, this usual rule will be varied either to also include solicitor-client costs or to disallow all or part of the full claim. Under the Federal Court Rules, for a case brought in the Federal Court, which the judge finds should have been commenced in a lower court, the judge may restrict the party-party costs payable by the losing side. This rule does not extend to variation of the award of compensation damages - only the legal costs.

[Answer 8: The cost and length of a court case or legal proceedings depend on the nature of the individual case and the jurisdiction in which the case is heard. Consequently, the cost and duration vary considerably and are difficult to quantify.]

b) Medidas administrativas

Any administrative provisional measures which relate to border measures are handled by the Australian Customs Service and are detailed below.

Subsection 135(7) of the Copyright Act allows the Australian Customs Service to seize imported copies of copyright material if a notice of objection to importation of the copies has been given to the Comptroller-General of Customs. The material that must be the subject of such copies is works, sound recordings, cinematograph films, published editions and recordings of broadcasts. Copies imported for personal use only are not subject to seizure. Section 131 of the Trade Marks Act allows the Australian Customs Service to seize and deal with goods that are imported into Australia if the goods infringe, or appear to infringe, a registered trademark. De minimis imports are exempt from this provision. Neither the Designs Act nor the Patents Act provide for Customs seizure of infringing goods. The Copyright Act allows for the interdiction of parallel imported copyright material. Some special provisions exist regarding books. Books published since 1991 and not first published in Australia (i.e. published within thirty days of first publication) are not subject to the importation right. Border procedures are not available in respect of exports.

Under s.132(1) of the Trade Marks Act and s.135(2) of the Copyright Act, the competent authority is the Comptroller (or Chief Executive Officer) of Customs who administers the Customs Act 1901. To initiate the seizure of copies or counterfeited goods the copyright owner, exclusive licensee or the trademark owner, or authorised user (the objector), must provide a written notice of objection to importation to the Comptroller of Customs together with any prescribed documents. Anotice remains in force for two years from the day on which the notice is given. The Comptroller may not seize copies or goods unless the copyright owner, exclusive licensee or the trademark owner or authorised user provides a security to cover the expense that may be incurred by the Commonwealth. Under the Trade Marks Act, the Comptroller may seize infringing goods which are manufactured outside Australia and imported into Australia and which are subject to the control of the Customs under the Customs Act 1901. Similarly, under the Copyright Act, the Comptroller-General may seize copies if a written notice of objection has been given to the Comptroller, and if the copies are imported into Australia for trade or some other purpose which will prejudicially affect the owner of copyright. If goods have a trademark that, in the opinion of the Comptroller, is identical with, or deceptively similar to, a notified trademark; and are goods in a class for which the trademark is registered; the Comptroller must seize the goods unless satisfied that there are no reasonable grounds for believing that infringement has occurred. Once goods or copies have been seized, the Comptroller must give written notice to the objector and the importer or owner of the seized copies or goods which identifies the copies or goods and states that they have been seized. Under the Trade Marks and Copyright Acts, the notice must also state that the goods or copies will be released to the designated owner or importer unless the objector brings an action for infringement, and gives to the Comptroller notice in writing of the action, within ten working days after the notice or, if the Comptroller extends that period, within the extended period. Under s.143(1) of the Trade Marks Act, if goods are seized and the Comptroller is satisfied that the use of a trademark is fraudulent, the Comptroller may ask the importer of the goods, or an agent of the importer, to produce any document relating to the goods; and give information about the name and address of the person by whom the goods were consigned to Australia; and the name and address of the person in Australia to whomthe goods were consigned. Failure to comply with the request is an offence punishable, on conviction, by imprisonment for a period not exceeding six months. If an infringement action has not been started within the required time the Comptroller must release the seized copies or goods to their importer or designated owner. Under the Trade Marks Act, the Comptroller may release the seized goods to their designated owner at any time before the end of the action period if new information has come to hand after the goods were seized which demonstrates that there are no reasonable grounds for believing that the notified trademark was infringed and no action for infringement has been brought by the trademark owner. Under the Copyright Act, the Comptroller may permit the objector or importer to inspect and remove a sample of the seized copies. In deciding the infringement case, the court may order that the seized copies or goods be released to their importer or designated owner subject to conditions (if any) that the court considers fit to impose; or it may order that the seized goods be forfeited to the Commonwealth. Under the Copyright and Trade Marks Acts, if the court decides that there was no infringement and the designated owner, or defendant to the infringement action, suffers loss or damage, the objector may be ordered to pay compensation.

The requirements for the timing of seizure and infringement action are outlined above. The copyright owner or exclusive licensee, or trademark owner must bring an action for infringement in relation to the seized copies or goods, and give notice of it to the Comptroller within ten working days of the notice from the Comptroller, unless an extension has been obtained. The extension cannot exceed ten working days. Under the Copyright and Trade Marks Acts if, three weeks after the action was brought, there is no order of the court preventing the release of the seized copies or goods, then they must be released by the Comptroller. If an infringement action is commenced, the court may order the release of the seized copies or goods at any time it sees fit.

There is no provision for ex officio action. All actions must be initiated by the copyright owner or exclusive licensee or by the owner (or in some circumstances an authorised user of a trademark) of the industrial property right. Under the Copyright Act, copies may only be seized if the copyright owner or exclusive licensee gives a notice of objection to the importation of the copies. Under the Trade Marks Act, the Comptroller may only seize goods if the goods bear a mark identical or similar to a trademark in relation to which a notice of objection has been given.

The Australian Customs Service is not empowered to order remedies for infringement. The Customs Service can seize infringing copies or counterfeit goods and dispose of those copies or goods if they are forfeited by the importer (Copyright Act) or by a decision of the court. All remedies are decided by the courts.

The Supreme Courts of the Australian States and Territories, the Federal Court and the High Court of Australia, and (additionally in the case of the Copyright Act) any other court of competent jurisdiction, have jurisdiction over criminal prosecutions for infringement of IPRs. Under the Patents, Trade Marks and Designs Acts, prosecutions must be initiated in a State Court. Under the Copyright Act, prosecutions can be initiated in the Federal Court or any other court of competent jurisdiction.

Under the Copyright Act the following are criminal offences: - making for sale or hire, commercially importing or distributing copies for the purpose of trade or to any other extent that affects prejudicially the copyright owner, knowing them to be infringements; - being in possession of such copies for commercial purposes; - being in possession of equipment known to be used for making infringing copies; - causing public performances of a work, film or sound recording at a public venue knowing the performance to be infringing; - advertising the supply of copies of computer programs that are known to be infringing. Criminal procedures are available under the Trade Marks Act for falsifying a registered trademark, falsely applying a registered trademark, the manufacture and possession of die etc. for use in commission of an offence, or the selling of goods with false marks.

The Australian Federal Police and the police forces of States and the Northern Territory are responsible for investigating suspected offences under the Copyright and Trade Marks Acts, whether or not complaints have been received. The decision on whether to prosecute for a suspected offence is a matter for the Director of Public Prosecutions or equivalent functionary in the States or Territories. In practice, most police action results from complaints and information received.

Refer to question 22. Private persons can initiate criminal proceedings, although the prosecution may be taken over by the Director of Public Prosecutions and continued or discontinued.

[Answer 22: The Australian Federal Police and the police forces of States and the Northern Territory are responsible for investigating suspected offences under the Copyright and Trade Marks Acts, whether or not complaints have been received. The decision on whether to prosecute for a suspected offence is a matter for the Director of Public Prosecutions or equivalent functionary in the States or Territories. In practice, most police action results from complaints and information received.]

Under the Copyright Act, penalties range from a maximum fine of $A 500 for some first offences by individuals to a maximum fine of $A 250,000 for a second or subsequent offence by a corporation. Individuals face a maximum fine of $A 50,000. Penalties under the Copyright Act can also include imprisonment for periods of between six months and five years. Under the Trade Marks Act, there are criminal penalties for falsifying a registered trademark, falsely applying a registered trademark, the manufacture and possession of die etc. for use in commission of an offence, or the selling of goods with false marks. The penalty for these offences are fines of up to $A 50,000, imprisonment for a period not exceeding two years or both. If counterfeit goods are forfeited to the Commonwealth, under the Trade Marks Act the goods are disposed of at the Comptroller's direction, or under the Copyright Act, as prescribed by regulations or as the Comptroller of Customs directs. Under the Copyright Act, infringing copies or implements used or intended to be used for making infringing copies may be ordered to be destroyed or delivered up to the copyright owner or otherwise dealt with.

Again, the cost and duration of proceedings are determined by court procedures, the specific nature of each case and the work load of the courts in the jurisdiction in which the case is heard.