Author: Stephen Jenkins | 31 January 2017
Many business owners are unaware that the Department of Immigration and Border Protection can be your best protection to your brand in Australia. It is not uncommon that a business owner will spend years developing their brand of goods in Australia only to find competitors and potential clients stocking products that have a brand that is identical or deceptively similar to their own. Quite often, these products are of an inferior quality and the subsequent reputational damage can be significant.
The thought of legal action against the companies that hold these infringing products is daunting but thankfully, the Trade Marks Act provides a low cost and efficient way to deal with this behaviour.
The Trade Marks Act – section 132, permits the owner of a registered trade mark to give written notice to the Comptroller-General of Customs objecting to the importation of goods that infringe the trade mark, which notice stays in force for four (4) years.
When in receipt of this notice, the Comptroller-General must seize goods entering Australia which have applied to them a mark which is substantially identical or deceptively similar to the notified trade mark.
Trade Marks Act then prescribes a procedure to allow the owner of the trade mark to be notified of the seizure, for the Comptroller to advise the trade mark owner of the name and details of the importer of the goods and for the trade mark owner to make an application to the court for infringement of its trade mark, with all appropriate relief.
This process has been used in multiple cases of trade mark infringement by companies such as Louis Vuitton and Sony e.g. Sony Computer Equipment Australia Pty Ltd v Yansen.
The simplicity of the system has the desired effect of disrupting the supply of the product that infringes your brand and also puts the trade mark owner into a powerful position to enforce its brand in the marketplace.
On the flipside, if you are a business which imports products into Australia that utilise a brand name, it is imperative that you make sure that the supplier from oversees is authorised to supply the branded product. You do not wish to find out that you are infringing a trade mark by the seizure of goods at the customs house and the loss of money on the transaction.
• Make sure that your brand is a “registered” trade mark.
• If you have an established brand in Australia, consider contacting us here at Madison Marcus to lodge the necessary notices with the Department of Immigration and Border Protection.
• If you are the importer of goods, review your contractual documents and verify that the supplier is authorised to provide the branded products.
If you have any questions or queries about the operation of the Trade Marks Act contact Stephen Jenkins Head of the Intellectual Property Group at Madison Marcus on +61 437 008 253 or at firstname.lastname@example.org
Disclaimer: Madison Marcus Law Firm produced this article. It is intended to provide general information in summary form on legal topics, current at the time of first publication. The contents do not constitute legal advice and should not be relied upon as such. Formal legal advice should be sought in particular matters.