2012 Down Under – A sample of Interesting Cases for Brand Owners

Parallel imports, overseas brands and the registrability of building names came under scrutiny from the Australian courts last year. As some of these cases demonstrate, the application of even long-established trademark protection principles can evolve

The Australian courts were busy considering a number of key issues for rights holders throughout 2012. This article covers some of the most significant and discusses their likely impact.

Parallel imports

The Full Federal Court of Australia considered the issue of parallel importation of goods and trademark infringement in several cases. The following decisions should serve as a warning to importers and assist rights holders in an area that has in the past proved difficult to police in Australia.

Round 1 - shark attack

Paul's Retail Pty Ltd v Sporte Leisure Pty Ltd ([2012] FCAFC 51) involved the use of the trademarks GREG NORMAN and SHARK on clothing imported and offered for sale in Australia by Paul's Retail. The marks were owned by Great White Shark Enterprises and licensed to Greg Norman Collections, which licensed an Indian company to manufacture and sell goods bearing the marks in India.

Paul's Retail purchased goods bearing the marks from the Indian manufacturer, arguing that the marks had been applied with the rights holder's consent. It sought to rely on the defence to infringement set out in Section 123 of the Trademarks Act 1995, which provides that there is no infringement "if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the mark".

The primary judge and the Full Court determined (Sporte Leisure Pty Ltd v Paul's International Pty Ltd (No 3) [2010] FCA 1162) that the marks had been applied to goods which were offered for sale outside the designated territory, and that the rights holder had not consented to this use. As a result, the goods were not "genuine" and Paul's Retail was unable to rely on Section 123.

Paul's Retail sought special leave to appeal the decision of the Full Federal Court to the High Court of Australia. However, this was refused.

Round 2 - enter Lonsdale

Lonsdale Australia Ltd also commenced proceedings in 2012 against Paul's Retail for trademark infringement (Lonsdale Australia Limited v Paul's Retail Pty Limited [2012] FCA 584). Lonsdale owns the Lonsdale trademarks in Australia. Lonsdale Sports Limited (LSL) owns the Lonsdale trademarks in Europe (both are part of the Lonsdale Group).

Paul's Retail purchased Lonsdale-branded goods. LSL's marks (or substantially similar marks) had been applied to the goods by a licensee of LSL in Europe, which was licensed to use the LSL marks in Europe. When Paul's Retail imported the Lonsdale goods into Australia, they were seized by Customs and Lonsdale subsequently commenced proceedings for trademark infringement.

Paul's Retail again relied on Section 123 (among others), arguing that goods bearing a trademark that had been applied with the consent of the rights holder should not be prohibited from entering into Australia. The primary judge determined that...