There is a bill currently before Parliament that is designed to clarify whether a person can import trade marked goods without infringing the local Australian trade mark registration. Its goal is to facilitate more parallel importation of legitimately branded goods into Australia, in order to increase local competition and benefit Australian consumers.
Where a trade mark has been applied to imported infringing goods by, or with the consent of, the owner of the Australian trade mark, a legal defence to infringement already exists. However, this defence requires the importer to prove that such consent has been given. In cases where goods change hands through a number of intermediaries before being imported to Australia, this defence can present difficulties for the alleged infringer. Readers may recall a crop of ‘Paul’s Warehouse’ cases, where non-counterfeited apparel was imported into Australia. Paul’s Warehouse was unable to prove that the Australian owner had consented to the application of the marks on those goods – and so was found to have imported infringing goods. Similar issues have thwarted importation of genuine printer toner units into Australia. Sometimes contractual arrangements between overseas sellers and their buyers can prohibit selling into or outside of certain markets, which again makes proving consent difficult. The proposed new laws provide that infringement will not occur if, following reasonable inquiries, a reasonable person would conclude that the trade mark was applied to the goods by, or with the consent of, a person who was: –– the owner, or licensee, of the trade mark –– a person with significant influence over the use of the trade mark by the registered owner or an authorised user, or –– an associated entity (within the
This effectively means that a great many companies within a corporate group will be deemed to be associated entities of the trade mark owner. And, if an associated overseas entity of the Australian trade mark registration owner uses the mark on goods overseas, those goods could be imported into Australia without infringing the Australian trade mark registration. This may have a deleterious effect on the businesses of local authorised distributors, although there may remain some scope for trade mark owners to prevent such importation through avenues such as the Consumer Law or the tort of passing off. The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 is still under consideration by Parliament, so it is not certain that it will become law. In the meantime however, importers need to carefully consider the provenance of imported goods in order to avoid infringing local trade marks.
TIM FRANCIS Principal
meaning of the Corporations Act 2001 ) of one of the above people.