By Julian Zmood -
Snapshot
- Practitioners acting for parallel importers may face resistance from Australian trade mark owners and local distributors.
- When defending an allegation of trade mark infringement, it is advisable to actively seek the early particularisation of an allegation of infringement.
- Assess whether infringement can be made out on the facts available, and once you have a thorough understanding of the nature of the allegation, consider whether the defence pursuant to section 123 of the Trade Marks Act 1995 (Cth) applies.
Parallel Imports – dealing with an initial complaint
Parallel importation refers to the situation in which goods are manufactured in a foreign market under the authority of the owner of an Australian registered trade mark and then lawfully imported into Australia by a person without the authority of the registered owner of the same trade mark in Australia.
If you act for a parallel importer, you may face resistance from the Australian trade mark owner or their local distributor. The first point at which your client may become aware of a problem is when they receive a notice that goods have been seized by Customs pursuant to s 134 of the Trade Marks Act 1995 (Cth) (‘TMA’), and/or a letter of demand.
Even before that point, Customs may write to the client to say that they have ‘formed a suspicion’ that there may well have been a contravention of the TMA and they may ask for the client to make representations about the nature of the goods held. The tentative tone of a letter should be taken for what it is: an opportunity to state the client’s case ahead of any invocation of Customs’ statutory power of seizure (s 133, TMA) and any determinations as to ownership of goods (s 133A, TMA). Unless satisfied that there are ‘no reasonable grounds for doing so’, the Customs CEO must seize goods (s 133(2) TMA).
