Lonsdale Australia vs Paul's Retail Pty Ltd & Anor (Paul's Warehouse Group)
The Federal court recently handed down a landmark decision regarding the importation of "parallel" products into Australia where in order to sell the products in the Australian marketplace the importer must have the permission of the registered trademark owner/s or risk violating Trade Marks Act.
Lonsdale Australia had discontinued selling to Paul's Warehouse and objected to Paul's warehouse importing and selling the European branded Lonsdale products ie the Lonsdale Branded clothing that was sold/selling throughout Europe as this infringed on their rights under the trademark act.
This is a very interesting case as although Paul's Warehouse had imported the product legitimately from Londale Sports German Licensee, the court decided that use of the Lonsdale trademark in Australia would require the Australian licensee's permission.As there are seperate trademark owners, those in Europe and those here in Australia, and consequently seperate supply chains and manufacturers, even though the products are bearing the same name, the onus was on Paul's Warehouse Group to prove they had the permission of Londale Australia to sell the product here in Australia.
This is a tricky and complicated case and unless you are very familar with Trademark laws as an importer you would probably have made the same mistake.This is the first decision of its kind that I am aware of in the retail sector.What does this mean?
Importers will now have to be very careful as to the products they purchase directly from overseas suppliers.If there is a trademark owner for that product here in Australia, the importer must request the permission of this owner prior to importing and selling the product here.Be under no illusion no Australian licensee is going to give an importer this permission as this would mean they lose the potential sales along with having to compete in the market with usually a similar product but at a cheaper price.What this means for the Australian consumers is prices will rise on branded products.
Have you been into the two dollar shops in your local shopping centre and bought the famous brand name toothpaste that is imported from Asia, or the washing powder with the same labelling but written in a different language? These could potentially be in breach of the trademark act and consequently importers will no longer be able to import the product or risk a hefty fine and lose of product by Customs.This will mean consumers will be forced to pay higher prices at the till.