Australia: Trade Mark Infringement - Who Can Provide Consent?

Key Point

  • The fact that goods to which a trade mark has been applied have been sourced from a related entity or member of the same corporate group as the Australian registered trade mark owner will not be sufficient to give rise to an implication, for the purposes of the defence, that the importer or seller of the goods has the necessary consent.

A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered (section 120 of the Trade Marks Act 1995 (Cth)).

However, there is a defence under section 123, which says that there is no infringement if the trade mark has been applied with the consent of the registered owner of the trade mark in Australia.

In Brother Industries Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490, Justice Tamberlin held that a respondent who is alleged to have infringed a registered trade mark will not be successful in establishing consent as a defence unless that consent, be it express or implied, came from the entity that is the registered owner of the trade mark.

The proceedings

Brother Industries Ltd (Brother Japan) and its Australian subsidiary, Brother International (Aust) Pty Ltd (Brother Australia), commenced proceedings in the Federal Court of Australia against Dynamic Supplies Pty Ltd for infringement of registered Australian trade marks of Brother Japan for the word "BROTHER". The alleged infringing conduct of Dynamic was the sale in Australia of unbranded, generic printer drum units in packaging to which the "BROTHER" trade marks were applied.

Dynamic sought to rely on the defence of consent. Until 2003, Dynamic sourced almost all of the Brother products it sold or distributed from Brother Australia or its authorised distributors. This arrangement changed in early 2003 when Dynamic sourced three shipments of units at a substantially lower price from another supplier, Discover Group Inc. Dynamic relied on evidence that Discover sourced its Brother products from All Day Trading, an authorised distributor of Brother products in the USA.

Accordingly, Dynamic claimed that the evidence established that, on the balance of probabilities, the units it imported from Discover were sourced originally from Brother International Corporation (Brother America), a wholly owned subsidiary of Brother Japan. It argued that, as the chain of supply of the products traced back to Brother America, it had implied consent for the purposes of section 123 of the Act.

Justice Tamberlin noted that the onus was on Dynamic, raising the defence, to establish it. Further, in order to make out a defence under section 123 of the Act, Dynamic must demonstrate that the application of the "BROTHER" trade mark was done with Brother Japan's express or implied consent as it was the registered owner of the trade mark in Australia. He held that Dynamic failed to establish such consent for two main reasons:

  • First, Dynamic did not establish that the chain of supply of the impugned products traced back to Brother America, let alone to Brother Japan. Justice Tamberlin held that the evidence did not demonstrate that the specific units and packaging were sold by Brother America to Discover. Without establishing this essential link in the supply chain, Dynamic could not show any consent, express of implied, by Brother America or Brother Japan for the purposes of section 123 of the Act.
  • Second, even if Brother America was part of the supply chain, Dynamic did not demonstrate that Brother Japan, the registered owner of the relevant trade marks in Australia, expressly or impliedly consented to the application of its trade mark to or in relation to the goods in question. No consent, whether express or implied, was given by Brother Japan to any person to apply its registered trade mark to the generic products. To the contrary, Brother Japan had distanced itself from the OEM units, manufacturing them only as unbranded products and selling them only through a confidential arrangement.

Justice Tamberlin went on to note that, in any event, a finding that Brother America was part of the supply chain of the impugned products would not allow Dynamic to rely on section 123 of the Act because it is the consent of the registered owner which must be acquired. He observed that "the situation where consent is not acquired from the registered owner of the trade mark but from a related entity in its corporate group has not, so far as I am aware, been considered in Australian law". Justice Tamberlin expressed the view that Brother Japan's consent for the purposes of section 123 of the Act was not to be implied from the fact that another member of the Brother corporate group may have, contrary to his finding, given its consent.

Accordingly, Justice Tamberlin held that Dynamic's use of the "BROTHER" trade mark was not done with the consent of Brother Japan. Its infringement of Brother Japan's Australian trade marks was thus not excused by section 123 of the Act.

Implication for lawyers advising clients

The view taken by the Court in this instance has significant implications for lawyers advising businesses that use a registered trade mark owned by another entity. Lawyers should ensure that their clients obtain the written consent of the registered owner of the trade mark and not simply rely on the representations of third parties, including related entities in the corporate group of the registered owner.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.