The firm suggested the case highlighted how such a strategy could ensure Australian trade mark owners were in a strong position to prevent infringement by so-called ‘parallel importation’ of goods bearing their registered or licensed marks.

In the recent case, Paul’s Warehouse was found guilty of infringing trade marks by bringing branded goods in from an overseas supplier without any authority of the Australian trade mark owner.

On this occasion, Lonsdale Australia’s marks were infringed.

Middletons provided additional detail, that Lonsdale Australia owned various registered Australian trade marks that 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 those 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.

As a result, the Court rejected the submission that the goods were parallel imports.

Middletons said the Court 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.

“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,” Middletons said.

“Paul’s Warehouse did not do this and no adverse inference was drawn against Lonsdale Australia in relation to the issue of consent.”

- Dawn Adams