Trade Marks Act 1998 · 2020 Revised Edition · Part 3 · Rights and Remedies of Proprietor of Registered Trade Mark
31. Action for infringement
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An infringement of a registered trade mark is actionable by the proprietor of the trade mark.
trade mark
“trade mark” means any sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person;
Subject to the provisions of this Act, in an action for an infringement, the types of relief that the Court may grant include the following:
an injunction (subject to such terms (if any) as the Court thinks fit);
damages;
an account of profits;
in any case to which subsection (5) applies, statutory damages under subsection (5)(c).
When the Court awards any damages under subsection (2)(b), the Court may also make an order under subsection (2)(c) for an account of any profits attributable to the infringement that have not been taken into account in computing the damages.
Except as provided for in subsection (3), the types of relief referred to in paragraphs (b), (c) and (d) of subsection (2) are mutually exclusive.
In any action for infringement of a registered trade mark where the infringement involves the use of a counterfeit trade mark in relation to goods or services, the claimant is entitled, at the claimant’s election, to —
damages and an account of any profits attributable to the infringement that have not been taken into account in computing the damages;
an account of profits; or
statutory damages —
not exceeding $100,000 for each type of goods or service in relation to which the counterfeit trade mark has been used; and
not exceeding in the aggregate $1 million, unless the claimant proves that the claimant’s actual loss from such infringement exceeds $1 million.
In awarding statutory damages under subsection (5)(c), the Court is to have regard to —
the flagrancy of the infringement of the registered trade mark;
any loss that the claimant has suffered or is likely to suffer by reason of the infringement;
any benefit shown to have accrued to the defendant by reason of the infringement;
the need to deter other similar instances of infringement; and
all other relevant matters.