Activewear giant Lonsdale has secured a major win in its bid to stop direct imports of trademarked goods into Australia.
The brand is the latest to battle discount activewear chain Paul’s Warehouse over its importation of grey goods, joining the likes of Quiksilver, Brooks and Great White Shark Enterprises.
The Federal Court held that the importation and sale of its goods by Paul’s Warehouse infringed the Australian registered trade marks of Lonsdale Australia. Paul’s Warehouse acquired 300,000 units of Lonsdale product through an international intermediary, with the products shipped from China to Colombo, processed and reloaded in Sri Lanka and then shipped to Sydney through Singapore.
Over 100,000 units of goods were seized by the Australian Customs and Border Protection Service earlier this year, as a result of trade mark notifications lodged by Lonsdale Australia. In May, the company obtained an interlocutory injunction restraining Paul’s Warehouse from dealing with the goods.
The Federal Court ruled that importing these goods, which beared the Australian registered trade marks of Lonsdale, consisituted a use of these marks. The Court held that Paul’s Warehouse failed to establish that these marks were applied to the goods with the consent of Lonsdale Australia.
While the case has provided a fresh line of attack to trade mark owners in combating direct imports, it is understood outcomes will depend on the facts behind each particular case. The case has broken new ground however, over whether the owner of Australian registered trade marks has consented to the application of these marks to goods manufactured overseas.
