Exemplary or punitive damages are a powerful remedy. They are designed to punish the wrongdoer, act as a deterrent and discourage the victim from seeking revenge by taking the law into their own hands. They bear no necessary proportionality to the usual compensatory damages and, if awarded, the amount should ‘sting’ (Harris v Digital Pulse Pty Ltd (2003) 56 NSWLR 298 at ).
At common law they are rarely awarded for torts such as negligence or, indeed, any tort. The legislative trend has been to severely restrict their availability, particularly in relation to personal injury, wrongful death and defamation. Further, they are not available under the Australian Consumer Law (Cth) and, the general rule in Australia, the UK and most other common law countries, is that they are not available for breaches of contract. Yet, the trend in intellectual property has been in the opposite direction. Such damages, usually referred to as ‘additional damages’, have long been available in Australia for infringement of copyright and circuits layout rights and they were then introduced for design and patent infringement.
However, for many years exemplary or punitive damages were not available for trade mark infringement in Australia. While such damages were available for passing off a common law trade mark, such orders were rare in Australia (cf Crimson v Claudia Shoes Pty Ltd (No 7)  FMCA 109 where $30,000 was awarded). By contrast, in the USA § 1117 of the Lanham Act provides the court with a discretion to award treble damages where the amount of the recovery based on profits is inadequate.
Following a Federal Government recommendation in 2009, punitive or additional damages for trade mark infringement are now available in Australia too. And without the upper limit that appears in §
1117 of the Lanham Act. IP Australia considered the penalty provisions in the Trade Marks Act 1995 (Cth). As part of that review it also considered the award of exemplary damages for trade mark infringement. An Options Paper was published with IP Australia supporting the option that an ‘additional damages’ provision, like s 122(1A) of the Patents Act 1990 (Cth), should be introduced into the Trade Marks Act. That section provides:
(1A) A court may include an additional amount in an assessment of damages for an infringement of a patent, if the court considers it appropriate to do so having regard to:
(a) the flagrancy of the infringement; and
(b) the need to deter similar infringements of patents; and
(c) the conduct of the party that infringed the patent that occurred:
(i) after the act constituting the infringement; or
(ii) after that party was informed that it had allegedly infringed the patent; and
(d) any benefit shown to have accrued to that party because of the infringement; and
(e) all other relevant matters.
In making the recommendation that a similar provision be inserted into the Trade Marks Act 1995, IP Australia concludes at p 26 of the Options Paper:
“IP Australia considers that this option should be adopted for the following reasons:
There has been some academic criticism internationally of the use of
additional damages to the effect that punishment is the realm of
criminal law. However, its use in the copyright and patents regimes has
provided a useful and uncontroversial method of addressing unique
problems in awarding damages for infringements of intellectual property
rights in Australia. It would be expected that this would also be the
case if additional damages were introduced in relation to trade mark