In 2013, $10 to 30 billion worth of trademarked presents sat under Australian Christmas trees. Each gift was inscribed with the words “From Santa” in writing that bore a striking similarity to Mum and Dad’s handwriting.
This means that last year, Santa and his elf-powered sweatshops manufactured billions of dollars worth of toys, books, DVDs and appliances. He did this using manufacturer trade marks and passed off these goods as genuine articles. The result? Parents avoided busy retailers and instead allowed Santa to provide their children with free gifts. No wonder the Aussie retail market suffered. Only parents of naughty children were shopping!
Clearly, this year Santa must be stopped. Yet no thought has been given to stopping this outrageous infringement of intellectual property rights, by the most notorious pirate the world has ever seen.
Thankfully, there is some hope. Toys and the like are protected by the Trade Marks Act 1995 (Cth), Designs Act 2003 (Cth) and Patents Act 1990 (Cth) while books and other works are protected under the Copyright Act 1968 (Cth). These protections were recently overhauled by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), which entered into force in April 2013 and represented a significant overhaul of the Australian intellectual property system.
Part 13 of the Trade Marks Act 1995 (Cth) allows a registered trade mark’s owner (the objector) to notify the Australian Customs Service to watch for and seize infringing goods. This means that, upon entering Australian territory, the contents of Santa’s sleigh may be searched and seized under s 133 of the Act if they bear any infringing trade marks. The objector must then bring an infringement action against Santa within 10 working days, otherwise the goods will be released. The goods are also required to be released if written consent is given by the objector, there are no reasonable grounds for believing the goods infringe the notified trade mark, or a court order has been made under s 137(3)(a) of the Act.
Identifying and serving Santa may prove difficult, as he is notoriously elusive. However, service is generally permissible outside of Australia for an action founded on a tort committed within Australia. It may be possible then to obtain leave to serve an originating process on Santa by way of a letter addressed to “The North Pole” (an address that everybody knows will reach Santa) or beneath a cookie and glass of milk on Christmas morning (the perfect Santa lure, although by then it may be too late).
Regardless, if the infringing goods are eventually released and are not collected within 90 days, they will be forfeited to the Commonwealth for disposal 30 days thereafter, thus saving Christmas. So I ask again: will somebody please save our trade marks from Santa Claus?
Trade marks and their protection are discussed in The Laws of Australia Subtitle 23.8 “Trade Marks”, while intellectual property is discussed more generally in Title 23 Intellectual Property. Service on overseas defendants is discussed in Subtitle 5.11 “Private International Law”.
For more information about The Laws of Australia, click here.