Parallel importers proceed at their own risk
Paul’s Retail Pty Ltd v Sporte Leisure Pty Ltd  FCAFC 51 (11 April 2012)
Paul’s Retail Pty Ltd v Lonsdale Australia Limited  FCAFC 130 (11 September 2012)
These two full Federal Court cases highlight the problems faced by businesses seeking to import and sell genuine products which are sourced from legitimate overseas suppliers but without consent from the Australian registered owner.
Brand owners may legitimately structure their business affairs by imposing territorial restrictions on their licensees and/or have a related entity own the relevant Australian trade mark registration.
In both cases, Paul’s was found to have infringed by selling genuine products obtained from suppliers who were not permitted to supply these products for sale in Australia. In each case, the relevant trade marks were not applied by the registered owner or with its consent. From a practical perspective, it is likely to be very difficult for an importer to ascertain, with certainty, whether there are any territorial restrictions which limit consent.
In the latter case, the Court made it clear that “where an importer of marked goods is a trader in, rather than a consumer of, marked goods, it is no more than an ordinary and natural use of language to say that the importer has used the mark in the course of its trade”. Consequently an importer or, for that matter, a retailer or other person dealing with marked goods, is at risk of infringement unless it can establish consent to such use by the registered owner and this will be a question of fact having regard to the circumstances of the particular case.