In our "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 Warehouse.
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 goods
(although Justice Gordon noted that this list is not exhaustive).
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 Australia
- 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 goods.
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.
