Australian Trademarks Lawyer & Attorneys : Nicholas Weston Law Firm : Copyrights, Intellectual Property

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A recent decision of Tamberlin J in the Federal Court of Australia has provided some interesting insights into the legality (or otherwise) of parallel importing of trade marked goods. See Brother Industries Ltd v Dynamic Supplies Pty Ltd [2007] FCA 490

When it comes to parallel importing of trade marked goods or grey imports, a key provision in the Australian legislation is s123 of the Trade Marks Act (Cth) 1995. Section 123 provides that:

a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.

Tamberlin J’s decision makes it clear that the onus is on the defendant to establish the existence of the necessary application of the trade mark or consent to the application of the trade mark by the trade mark owner. In addition, and more importantly, his obiter comments made it clear that it is not sufficient to demonstrate that another member of the trade mark owner’s corporate group applied the trade mark or consented to the relevant application.

The facts of the case are relatively straightforward. Dynamic Supplies acquired, via the United States, some printer drum units which were made by the Australian trade mark owner, Brother Industries Ltd, a Japanese company, (Brother Japan). Importantly though, Brother Japan did not place its trade mark on these printer drum units. Such products are known as ‘original equipment manufacturer’ products (OEM’s). The OEM’s acquired by Dynamic Supplies via the United States were sold in packaging using the Brother Japan trade marks and which purported to be Brother packaging. Tamberlin J found that, in fact, the packaging was counterfeit and that packaging was neither made by or with the consent of Brother Japan.

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Australian applicants for United States trademarks should note a recent decision in the US: Rosenruist-Gestao E Servicos LDA, v. Virgin Enterprises Ltd., No. 06-1588 (4th Cir. Dec. 27, 2007) which held that a foreign company that has no US employees, locations, or business activities must produce a designee to testify at a deposition in the Eastern District of Virginia just because it filed a trademark application with the USPTO, which is located there.

As a result, a litigant in a US trademark dispute can compel an Australian witness (for example) to travel to the USA to give in-person deposition testimony "for use in any contested case" in the USPTO, such as an opposition proceeding to a trademark application.

A Memorandum by Fried Frank, who acted for the successful party in the Rosenruist case, summarises the position. It states:

"Non-U.S. business entities that file applications for United States registration of trademarks or service marks have long been required to “designate” a person “resident in the United States on whom may be served notices or process in proceedings affecting the mark.” If no such designation is made, the Director of Patents and Trademarks, located in Alexandria, Virginia, U.S.A., is deemed by default to be the applicant’s designee for purposes of service of process." . . .

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It is Australian Open time again, so this seems topical. According to Melbourne newspaper The Age, local hope, tennis player Lleyton Hewitt “is trademarking his "C'mon" celebration and is going into business.” The article is here.

A quick search of the trade mark applications revealed that Lleyton Hewitt Marketing Pty Ltd has applied for the following to be registered:

• “Lleyton & Bec Hewitt” in class 41
• “C’mon” (stylised device) in classes 9, 14, 16, 25, 28, 32 and 41
• A stylised logo representing a man wearing a cap with a hand pointing to his face in classes 9, 14, 16, 25, 28, 32 and 41
• “C’mon” together with the stylised logo representing a man wearing a cap with a hand pointing to his face in classes 16, 25, 28 and 41
• “Lleyton Hewitt” in classes 9, 14, 16, 25, 28, 32 and 41

The goods and services sought to be protected cover items including sunglasses, watches, plastic jewellery, party hats, hooded pullovers, frocks, blouses, playing cards, beer, health club services and many others. A copy of the Search Report can be downloaded here.

So what?

As Lleyton Hewitt knows, wanty wanty does not mean getty getty. The Hewitt applications will need to get past someone else’s prior trade mark application for “C’mon” covering goods in class 25.

The goods and services applied for are far-reaching, possibly over-reaching. Once registered, each mark will need to be used on the relevant goods or services covered by each application within 3 years (of the application date) or -- by the operation of section 92 of the Trade Marks Act 1995 (Cth) (Act) -- the relevant mark will be vulnerable to removal from the register for non-use in respect of those goods or services. "Use" within this context means "use of a trade mark in relation to goods" and "use of a trade mark in relation to services" within the meaning of section 7 of the Act and the attendant case law.

The Age reports that Hewitt’s characteristic hand signal was invented in the 1980’s by a Swede called Niclas Kroon who called it “the vight”: meaning in Swedish something like ‘for sure’. It was popularised by another Swede, Mats Wilander. On some reports, Kroon is cross that he let his registered trade mark lapse and has now learned that Hewitt is applying for it. This idea is misconceived.

A trade mark that depicts a gesture may well be registrable in Australia under sections 41(5) or 41(6) of the Act, but they enjoy no separate status as a 'gesture mark'. There are examples of this type of non-traditional mark overseas, for example on the UK Register for a person tapping his nose and in the United States, there was a dispute between a wrestler and some rapper over use of a 'diamond cutter' hand gesture: details here and here. Hewitt is not seeking to register a 'gesture mark' but simply a stylised device, possibly because Niclas Kroon would have 'priority' as the first user of his 'gesture mark' and may well have 'used' the gesture in Australia in a trade mark sense: (see Carnival Cruise Lines Inc v Sitmar Cruises Ltd 1994 FCA 936, AIPC 91-049, 120 ALR 495.  If the Hewitt applications eventually achieve registration, they will not prevent others from performing "the vight". Unfortunately.