In the recent case of Playgro Pty Ltd v Playgo Art &
Craft Manufactory Limited  FCA 280, the Australian Federal
Court held that an overseas manufacturer infringed Australian trade
mark registrations by supplying goods to third party retailers in
China, who then on-sold the goods to customers in
Briefly, the facts of the case were as follows: the applicant
was the owner of a number of Australian trade mark registrations
for "PLAYGRO". The respondents were Hong Kong companies
who manufactured and sold in China toy products bearing the mark
"PLAYGO". The respondents sold and delivered toy products
to third party Australian retailers in China. The respondents knew
when they sold the products to the Australian retailers that the
goods were to be offered for sale and sold to customers in
The Court held that the respondents had infringed the
applicant's Australian trade mark registrations on the basis
the "PLAYGRO" and "PLAYGO" marks were
deceptively similar; and
the respondents' conduct constituted use of the
"PLAYGO" mark in Australia.
On the question of use of the mark in Australia, the respondents
submitted that they should not be liable for trade mark
infringement under Australian law given that they sold and
delivered the goods to the third party retailers in China. However,
the Court rejected this and concluded that the "PLAYGO"
mark was being used by the respondents so long as the goods were in
the course of trade, with the goods remaining in the course of
trade until their ultimate sale to customers in Australia.
Lesson: Overseas manufacturers should be aware that they could
infringe Australian trade mark registrations if they supply goods
that are then on-sold into the Australian market. Overseas
suppliers should consequently consider trade mark clearance
searches in Australia and obtain Australian trade mark
registrations where possible.
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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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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