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Competition Law Reading Room

Trade marks and parallel imports

Warwick Rothnie
(2014) 22 Competition and Consumer Law Journal 39

 

Abstract

Trade Marks Act s 123 provides an express defence against infringement for the use of a registered trade mark in relation to goods to which the trade mark has been applied by or with the consent of the trade mark owner. In a number of recent decisions, the Federal Court has struggled with the deceptively simple terms of the provision to the extent that, arguably, neither trade mark owners nor prospective parallel importers can confidently predict when the defence may be relied on. So, almost 20 years after its enactment, it is still not clear who is the ‘trade mark owner’ for this purpose nor the nature or scope of the ‘consent’ that is required. Moreover, the way the courts have interpreted the provision indicates that its introduction has led to a far reaching change in the fundamental concept of what constitutes ‘use as a trade mark’.

 

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