The Federal Court recently held that Paul’s Retail did not benefit from the “parallel importation defence” to trade mark infringement in relation to a significant shipment of Lonsdale products sourced from a European supplier licensed by Lonsdale. The case involved an unusual factual scenario: the registered owner of the LONSDALE trade marks in Australia is the local Lonsdale entity (not the parent company who licensed the European supplier); and, the European supplier was licensed to use a number of LONSDALE marks but these did not match the marks applied to the goods in question. The Trial Judge held that s123 of the Trade Marks Act and the Champagne Heidsieck principle will only apply where it is possible to establish that the owner of the Australian registered trade marks consented to application of the marks to the goods in question. Here, the local Lonsdale entity had not consented to the application of the LONSDALE marks; and the European licensee did not legitimately apply the LONSDALE marks which featured on the goods. In that sense, the goods were never “genuine”. Paul’s Retail obtained leave to appeal the decision and the Full Federal Court heard the appeal on 28 August 2012 and reserved judgment. Whilst the limitations on the European supplier’s licence is a potentially significant fact distinguishing this case from other parallel importation scenarios, the Trial Judge appeared willing to decide the matter in Lonsdale’s favour on the question of trade mark ownership and consent alone. Hopefully the Full Court will provide further guidance on this aspect. We will report further once the Full Court decision is available.
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Parallel importers beware
- Baker & McKenzie
- September 4 2012
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Senior Patent Counsel
Royal DSM NV