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
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
 (FCA) the Court considered whether importing,
distributing and selling goods constituted 'use' of a trade
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
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
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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