Are you importing more than you bargained for?
There is a long list of procedures, certifications and regulations that must be considered and adhered to before an importer can bring goods into Australia for the purpose of re-sale.
In addition to those considerations, there are a number of legal issues that can be overlooked or escape the attention of the inexperienced or uninformed importer.
For instance, did you know that importing and offering goods for sale in Australia may amount to a trade mark infringement?
Under section 120(1) of the Trade Marks Act 1995 a registered trade mark is infringed if the person "uses as a trade mark, a sign that is substantially similar with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered".
Liability for trade mark infringement
In Paul's Retail Pty Ltd v Lonsdale Australia Limited [2012] (FCA) the Court considered whether importing, distributing and selling goods constituted 'use' of a trade mark.
In this instance, Paul's Warehouse imported Lonsdale branded apparel from an overseas supplier. The overseas supplier had a licence from Lonsdale Sports Limited (LSL) to promote, distribute and sell goods bearing the Lonsdale marks in many countries in Europe. Lonsdale Australia was the owner of a number of Lonsdale registered trade marks in Australia.
Lonsdale Australia commenced legal proceedings against Paul's Warehouse to restrain them from importing, promoting, distributing, offering for sale or selling clothing and footwear that bear the sign LONSDALE. The problem Paul's Warehouse had was that the overseas supplier was not licenced to sell goods "outside" of Europe. Also, Lonsdale Australia did not consent to the application of its trade marks to goods imported by Paul's Warehouse. The Court found that an importer who sells goods that bear the same marks as registered trade marks is liable to an action for infringement by the registered owner if those marks were not applied by the registered owner or with its consent.
Licensing Issues
In Australia, an importer of goods may also be liable for copyright infringement if they import, sell or distribute goods in Australia, without the licence of the copyright owner. In these circumstances, the importer would only be liable if they knew, or ought reasonably to have known, that the making of the goods would have constituted an infringement of the copyright if the goods had been made in Australia by the importer. Even though the importer does not authorise the reproduction of the infringing good, they may still be liable for copyright infringement.
Given the potential risks associated with importing goods and copyright infringement, it is fundamental that you carry out proper due diligence before you import goods into Australia.
If the goods bear a trade mark, you should check that the mark has been applied by or with the consent of the owner of the trade mark owner. If you are aware of a competitor or third party that has a similar good, check whether they claim any copyright in the goods.
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.