Brand owners using well drafted agreements with distributors, manufacturers and licensees which include territorial restrictions could potentially stop parallel imports entering the Australian market.
The Court of Appeal of the Federal Court has dismissed an appeal by Paul’s Retail Pty Ltd (Paul’s) in the “Greg Norman case”. Paul’s attempted to argue that it imported and sold parallel imports of genuine Greg Norman branded garments into Australia made by Indian licensee BTB with the consent of the trade mark owner Great White Shark Enterprises LLC (GWS).
The scope of BTB’s licence was restricted to use of the Greg Norman marks in India.
BTB knew the garments in question were to be suppled outside of India. The garments were not “genuine goods”, as they were not goods upon which the marks had been properly used and BTB stood in the same position as a third party applying the Greg Norman marks without a licence from the trade mark owner.