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The power of your brand

Business Law News | December 2012

A recent case, Paul’s Retail Pty ltd v Lonsdale Australia Pty Ltd [2012] considered the question of whether importing goods would amount to use of a trade mark, and as a result, might amount to an infringement of a trademark. This case was brought by Lonsdale Australia against Paul’s Retail. Paul’s Retail had been purchasing and importing products that bore the Lonsdale trademark from a European company that was licensed to manufacture goods and affix the Lonsdale mark to them. These products were of different quality and price to the goods sold in Australia and were intended for the European market. This practice is referred to as parallel importation, where goods are purchased in a foreign jurisdiction and for a lower purchase price. Paul’s Retail attempted to defend this claim by arguing that, as the goods were genuine, there could be no infringing use. The Full Federal Court rejected this argument affirming the trial judge’s decision that Paul’s Retail had infringed the marks held by Lonsdale Australia by importing the goods.

The decision has indicated a number of key factors that importers should be aware of:

  • Where an importer wishes to undergo parallel importation, it is the responsibility of the importer to show that they have the consent of the Australian brand owner to import those goods.
  • Where the brand is owned in Australia by a group entity based in Australia, an importer will find it difficult to show that they have the permission of the brand owner
  • Where a third party is licensed to produce products by the brand owner but is prevented from selling those goods outside the licensing area, permission will not have been given by the brand owner.

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