"Man v Shark" eAlert on 12 April 2012, we reported on
the Full Federal Court finding that Paul's Warehouse infringed
some GREG NORMAN trade marks by importing products from another
country bearing those marks.
This month, the Federal Court of Australia has again found
Paul's Warehouse guilty of infringing trade marks by bringing
branded goods in from an overseas supplier without any authority of
the Australian trade mark owner. This time, it is Lonsdale
Australia's marks that were infringed.
Lonsdale Australia owned various registered Australian trade
marks, which were assigned to it by Lonsdale Sports Limited
(Lonsdale Sports). Lonsdale Sports licensed a company, Punch, to
promote and sell in Europe goods bearing certain
"Lonsdale" trade marks.
At least one of these trade marks was the same as one of
Lonsdale Australia's registered marks. The goods sold by Punch
were eventually imported into Australia and sold by Paul's
Paul's Warehouse argued this was a case of it importing
genuine goods made by an authorised supplier, and therefore should
be treated as parallel imports or "grey goods". However
Paul's Warehouse was unable to establish that Lonsdale
Australia – as the Australian trade mark owner
– consented to application of its trade marks to the
goods imported by Paul's Warehouse, which would have given
Paul's Warehouse a defence to infringement.
The Court therefore rejected the submission that the goods were
parallel imports and made it quite clear that the focus must be on
the trade marks registered in Australia, the identity of the
parties involved, and the transactions preceding the arrival of the
marks into Australia.
In investigating whether Paul's Warehouse had established
the above defence, Justice Gordon looked at the grounds which
Courts have said in previous cases might give rise to an actual or
implied consent of a trade mark owner, including:
being able to trace the chain of supply of the imported goods
back to the trade mark owner
the trade mark owner being in the same corporate group as the
company that put the trade marks on the imported goods
any other conduct by the trade mark owner that might show that
it consented to application of its trade marks to the imported
(although Justice Gordon noted that this list is not
Justice Gordon found that Paul's Warehouse had
not provided any evidence that:
Lonsdale Australia played any role in the application of a mark
to any of the imported goods
the company, Punch, that applied the trade marks to the
imported goods was part of the same corporate group as Lonsdale
Lonsdale Australia had taken or failed to take any other step
that might show its consent to application of its marks, or the
marks that were actually applied to the imported goods, to those
There were other factors in the case that also contributed to
findings against Paul's Warehouse. These included that Punch
used trade marks on the goods sold to Paul's Warehouse that
Punch was not licensed to use.
The Court also stressed that the onus is on the respondent to
adduce evidence to establish that the trade marks were affixed with
the trade mark owner's consent. Paul's Warehouse did not do
this and no adverse inference was drawn against Lonsdale Australia
in relation to the issue of consent.
The case reinforces that a well-considered trade mark protection
and licensing strategy can put Australian trade mark owners in a
strong position to prevent infringement by so-called "parallel
importation" of goods bearing their registered or licensed
marks. This strategy should include careful consideration of the
factors set out by the Court above.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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