Director of Public Prosecutions (Cth) Reference no 1 of 2008
[2008] VSCA 214
•30 October 2008
SUPREME COURT OF VICTORIA
COURT OF APPEAL
No 1 of 2008
| COMMONWEALTH DIRECTOR OF PUBLIC PROSECUTIONS REFERENCE NO 1 OF 2008 |
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JUDGES: | MAXWELL P, VINCENT JA AND VICKERY AJA | |
WHERE HELD: | MELBOURNE | |
DATE OF HEARING: | 14 October 2008 | |
DATE OF JUDGMENT: | 30 October 2008 | |
MEDIUM NEUTRAL CITATION: | [2008] VSCA 214 | |
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Criminal law – Mens rea - Statutory offence - Knowledge that trade mark falsely applied to goods – Whether prosecution must prove knowledge that false application itself unlawful – Whether prosecution must prove knowledge by the accused that his or her acts were unlawful - No knowledge of criminality required - He Kaw Teh v The Queen (1985) 157 CLR 523 applied – Trade Marks Act 1995 (Cth) s 148.
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| APPEARANCES: | Counsel | Solicitors |
| For the Applicant | Ms Wendy Abraham QC | Office of Public Prosecutions |
| For the respondent | Mr O P Holdenson QC Mr LRC Gwynn | Simon English |
MAXWELL P
VINCENT JA
VICKERY AJA:
There is before the Court a reference by the Commonwealth Director of Public Prosecutions, pursuant to s 450A of the Crimes Act 1958, of certain points of law concerning offences against s 148 of the Trade Marks Act 1995 (Cth).
Section 148 provides as follows:
A person is guilty of an offence if the person intentionally:
(a) sells goods; or
(b) exposes goods for sale; or
(c)has goods in his or her possession for the purpose of trade or manufacture; or
(d)imports goods into Australia for the purpose of trade or manufacture;
knowing that, or reckless of whether or not:
(e)a falsified registered trade mark is applied to them or in relation to them; or
(f)a registered trade mark has been unlawfully removed from them; or
(g)a registered trade mark is falsely applied to them or in relation to them.
The accused (“HG”) was tried – and acquitted[1] - in the County Court on a number of counts of contravening ss 148(b), (g) and a number of other counts of contravening ss 148(d), (g). It was alleged, respectively, that HG had –
· intentionally exposed goods for sale, knowing that, or reckless of whether or not, a registered trade mark was falsely applied to or in relation to the goods (ss 148(b) and (g));
· intentionally imported goods into Australia for the purpose of trade, knowing that, or reckless of whether or not, a registered trade mark was falsely applied to or in relation to the goods (ss 148(d) and (g)).
[1]The right of the Director to refer a point of law to the Court of Appeal only arises when there has been an acquittal: s 450A(1).
The elements of the offences were in dispute between the parties in the course of the trial, and were the subject of legal argument. The judge ruled that, in order to establish the offences charged, the Crown had to prove that HG knew that what he was doing was wrong. He said:
[T]his is not an absolute offence, … there has to be a knowledge or at least an awareness or a belief … that to perform such an act [as alleged] is wrong either that being that it is unlawful in a criminal sense or that it is wrong according to the ordinary standards of men.
The judge directed the jury accordingly. The relevant passages from the charge are as follows:
So that is what this is about. Did they individually intentionally import batteries (Count 1) and did they intentionally import those batteries either knowing or being reckless as to whether the batteries that arrived would have on them, a falsely applied trademark. That concept goes through each of those importing charges. You look at the goods; you look at say Count 8, we are dealing with handbags. Same thing. Were they intentionally imported handbags knowing or being reckless, as to whether those handbags would have a falsely applied trademark.
…
Inherent in that is that the Crown would need to prove beyond reasonable doubt that assuming those matters were proved, that each accused individually was aware that it was wrong. That is, unlawful in a criminal sense. If you like, as opposed to a potential for a civil liability. They have to know it is a criminal offence.
And later:
The next group of counts are – sorry, and the other aspect of it is, knowing it is wrong.
After deliberating for some time the jury asked the following question:
Criminal mind: Do we need to prove [sic] beyond reasonable doubt that the accused knew that their action was criminally wrong rather than just wrong?
The judge replied:
When I was explaining to you, ladies and gentlemen, why the Crown has to prove that it is criminally wrong as opposed to wrong because of the number of items that on the face of it, are fake, the video and everything else but they are not, it is not a criminal offence. …
The point I was trying to get across to you that to elevate something into a criminal offence, it cannot be just like pot luck, all right, where you have got all these matters that might be suitable for civilly, may or may not be. To elevate to a criminal offence there has got to be a mental aspect of it as well which is criminally wrong as opposed to civilly wrong to put the correct legal terms on it. That is in this situation.
Shortly after the jury were given this answer, they returned verdicts of not guilty on each count.
The points of law on which the Director seeks this Court’s opinion are as follows:
A. What are the elements of an offence against ss 148(b), (g) of the Trade Marks Act 1995?
B. Do the elements include, as ruled by the learned trial judge, that the accused had knowledge, awareness or a belief that the conduct was unlawful in a criminal sense or wrong according to the ordinary standards of men?
C. What are the elements of an offence against ss 148(d), (g) of the Trade Marks Act 1995?
D. Do the elements include, as ruled by the learned trial judge, that the accused had knowledge, awareness or a belief that the conduct was unlawful in a criminal sense or wrong according to the ordinary standards of men?
The answers which the Director contends should be given are as follows:
Question A – the elements of an offence contrary to ss 148(b), (g) of the Act are:
(b)
·physical element – conduct (expose goods for sale);
·fault element – intention.
(g)
·physical element – circumstance (a registered trade mark is falsely applied to them or in relation to them);
·fault element – knowledge or recklessness.
Question B – No.
Question C – the elements of an offence contrary to ss 148 (d), (g) of the Act are:
(d)
·Physical element - conduct (import goods into Australia for the purpose of trade or manufacture);
·fault element – intention;
(g)
·physical element – circumstance (a registered trade mark is falsely applied to them or in relation to them);
·fault element – knowledge or recklessness.
Question D – No.
For reasons which follow, we would uphold the Director’s submission and answer the points of law as he proposes. Neither of the offences requires proof that the accused knew his conduct was unlawful or wrong.
It is necessary first to refer to the Criminal Code 1995 (Cth), in order to understand how the terms “physical element” and “fault element” are used.
The Commonwealth Criminal Code
Chapter 2 of the Criminal Code 1995 (Cth) codifies the general principles of criminal responsibility with respect to offences against the laws of the Commonwealth.[2] These provisions have applied to all Commonwealth offences (including the alleged offences) since 15 December 2001.[3]
[2]Criminal Code 1995 (Cth) s 2.1; R v Saengsai-Or (2004) 61 NSWLR 135, [34] – [43] (Bell J, with whom Wood CJ and Simpson J agreed); DPP (Cth) v Neamati [2007] NSWSC 746, [9] (Howie J).
[3]Criminal Code 1995 (Cth) s 2.2.
An offence consists of physical elements and fault elements.[4] Each offence consists of the prescribed physical elements and one of the requisite fault elements for that physical element.[5]
[4]Ibid s 3.1(1). Unless the offence provision itself provides no fault element for one or more physical elements (s 3.1(2)) or provides for a different fault element (s 3.1(3)).
[5]Ibid s 3.2. For general principles in relation to the application of the Code see: Lee v R (2007) 170 A Crim R 287; The Queen v Tang (2008) 249 ALR 200, [46] – [49] (Gleeson CJ, with whom Hayne, Heydon, Crennan, Kiefel JJ agreed).
The various physical elements are identified in Division 4 of Chapter 2 of the Code. Section 4.1(1) relevantly identifies three types of physical element, as follows:
4.1 Physical elements
(1) A physical element of an offence may be:
(a) conduct; or
(b) a result of conduct; or
(c)a circumstance in which conduct, or a result of conduct, occurs.
Four fault elements are specified in s 5.1 of the Code, as follows:
5.1 Fault elements
(1)A fault element for a particular physical element may be intention, knowledge, recklessness or negligence.
Succeeding provisions define the states of mind which will constitute the various fault elements for any particular physical element.
The elements of the relevant offences under s 148 of the Trade Marks Act can be readily classified according to this scheme. Each of the offences involves two physical elements and a fault element in relation to each of those physical elements. Thus, in the case of the offence against ss 148(b), (g) –
· the first physical element is the exposing of the goods for sale. The fault element is intention. That is, the exposing for sale must be intentional.
· the second physical element is the false application of a registered trade mark to, or in relation to, the goods. The fault element is knowledge or, alternatively, recklessness. That is, the defendant must know of, or be reckless of, the false application.
In the case of the offence against ss 148(d), (g) –
· the first physical element is the importation of goods for the purpose of trade or manufacture. The fault element is intention;
· the second physical element is (again) the false application of a trade mark. The fault element (again) is knowledge or recklessness.
This analysis was not in dispute. Issue was joined only in relation to the second element of each offence, concerning false application of a trade mark.
False application of a trade mark
It can be seen that, when the physical element and the fault element in paragraph (g) of s 148 are combined, what must be proved is that the defendant –
knew that, or was reckless of whether or not, the registered trade mark was falsely applied to or in relation to the goods.
A trade mark is falsely applied if its application is unauthorised. According to the definition in s 146(2), a trade mark is falsely applied to goods if it is applied without the permission of the registered owner of the trade mark or of an authorised user, and without the application being required or authorised by the Act, a direction of the Registrar or an order of a court.
It follows, the Director argues, that proof of the paragraph (g) element requires the prosecution to establish that the accused knew that, or was reckless of whether or not, a trade mark was applied to the goods without authorisation. Proof of knowledge of that fact is sufficient. There is no requirement to prove that the accused appreciated that his conduct was unlawful or wrong.
The Director’s submission is plainly correct. The conclusion follows as a matter of straightforward statutory interpretation. The language of paragraph (g) is clear and unambiguous.
There is no room for implying common law concepts into the Code.[6] But, even if there were, the common law has long since discarded any notion that criminal responsibility depends on proof that the accused person knew that what he/she was doing was unlawful. In He Kaw Teh v The Queen[7], the High Court adopted as a correct statement of the law on mens rea what had been said 50 years earlier by Jordan CJ in R v Turnbull,[8] as follows:
… [I]t is also necessary at common law for the prosecution to prove that [the accused] knew that he was doing the criminal act which is charged against him, that is, that he knew that all the facts constituting the ingredients necessary to make the act criminal were involved in what he was doing. If this be established, it is no defence that he did not know that the act which he was consciously doing was forbidden by law. Ignorance of the law is no excuse. But it is a good defence if he displaces the evidence relied upon as establishing his knowledge of the presence of some essential factual ingredient of the crime charged.[9]
[6]R v Barlow (1997) 188 CLR 1, 18-19 (McHugh J), 32-33 (Kirby J); Campbell v R [2008] NSWCCA 214, [141] (Weinberg AJA, with whom Spigelman CJ and Simpson J agreed).
[7](1985) 157 CLR 523.
[8](1943) 44 SR (NSW) 108, 109.
[9]157 CLR 523, 531 (Gibbs CJ), 572 (Brennan J), (emphasis added).
The written submission for HG, however, contended that the prosecution not only had to prove that the accused knew of (or was reckless as to) the false application of the trade mark but
was thereby required to prove that the [accused] had knowledge that, or was reckless whether or not, some of the requirements imposed by the Act had been contravened by a person.
The submission relies on the fact that the false application of a trade mark is an offence. Section 146(1) provides as follows.
A person is guilty of an offence if the person:
(a)falsely applies a registered trade mark to goods that are being, or are to be, dealt with or provided in the course of trade; or
(b)falsely applies a registered trade mark in relation to goods or services that are being, or are to be, dealt with or provided in the course of trade;
knowing that the trade mark is registered or reckless of whether or not the trade mark is registered.
The submission continued:
Moreover, if the Crown proved [knowledge of the unauthorised application of the trademark] … it necessarily follows that the Crown had proven that the [accused] knew that, or was reckless whether or not, something had been done by a person (namely, the false application by a person of a registered trade mark to goods) which was contrary to that which was required or authorised by the Act.
The Crown would therefore have proved that the accused knew that, or was reckless whether or not, a person had “unlawfully” applied to the goods the subject of the counts (which he had exposed for sale or imported into Australia) a registered trade mark, that is, contrary to the criminal law, that is, unlawful or wrong in a criminal sense or criminally wrong.
[Accordingly] a verdict of guilty of an offence contrary to s 148(b)(g) or s 48(d)(g) of the Act effectively involves a finding of matters set out within [Points of Law [B and D]] [that is, a finding that the accused had knowledge, awareness or a belief that the conduct was unlawful in a criminal sense or wrong according to the ordinary standards of men].
The argument for HG thus involved the following steps:
1.Proof - for the purposes of paragraph (g) - that the accused knew[10] of the false application of a trade mark to the relevant goods would depend on showing that he/she knew that the application of the trade mark was unauthorised (in the sense defined in s 146(2)).
2.Proof of that knowledge would necessarily involve proving – and the prosecution are therefore required to prove – that the accused knew that the offence of false application had been committed under s 146(2), that is, that ‘a person had ‘unlawfully’ applied to the goods … a registered trade mark’.
3.Proof of that knowledge would amount to proving that the defendant knew that something ‘wrong in a criminal sense or criminally wrong’ had occurred.
4.Proof of that knowledge would ‘effectively involve’ proof that the accused knew that his/her own conduct was unlawful or wrong.
[10]For reasons of simplicity, we refer here and subsequently only to knowledge and not to the alternative of recklessness.
The starting-point is uncontentious, but thereafter the analysis fails at every step. Proof that the accused knew of the false application of the trade mark does not involve, less still does it require, proof that he/she knew that the false application was an unlawful act. And, even if the accused were proved to have known that the false application was itself unlawful, it would not follow that he/she had been shown to have been aware that his/her own conduct (in importing or displaying the goods bearing the trade mark) was wrongful.
What is required for proof of the paragraph (g) element is knowledge of the facts constituting the false application of a trade mark – and no more. As counsel for HG eventually conceded when pressed by the Court, the only possible answer to questions B and D was ‘no’.
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