"Grey goods" are genuine goods imported into Australia by someone other than the trade mark owner or an authorised licensee. This is often referred to as "parallel importation."
You can import grey goods into Australia if the trade mark owner in Australia is the same as the trade mark owner which produced the goods overseas. This is something that we can easily check for you.
Section 123 of the Trade Marks Act provides that an importer is held not to have infringed a registration if the trade mark was applied to the goods "by, or with the consent of, the registered owner of the trade mark."
However, the Australian owner of the trade marks may be different to the foreign owner where the goods are sourced.
Where a trade mark is applied by a licensee under a licence to manufacture, if the licensed manufacturer is limited under contract to only use the trade mark in a particular territory which excludes Australia, then the parallel imported product from that territory into Australia will infringe registered trade mark rights in Australia.
These issues were highlighted in the case of Paul’s Retail Pty Ltd v Lonsdale Australia Limited [2012] FCAFC 130.
Lonsdale Australia became the registered owner of the LONSDALE mark.
It acquired the trade mark registrations from Lonsdale Sports Limited ("Lonsdale Europe").
Lonsdale Australia had licensed its rights to those registrations to another entity, which supplied “Lonsdale” branded goods to Paul’s Warehouse.
Lonsdale Europe licensed the rights to use its LONSDALE marks to a manufacturer called "Punch GmbH", which made the branded goods with holographic labels ("the European goods"). However, that licence did not include the right to use the trade marks Australia.
The European goods were sold in America. Paul's Warehouse imported the European goods from America.
Because the contract between Lonsdale Europe and Punch GmbH did not allow the use of LONSDALE mark in Australia, the trade mark was not applied to the goods "by, or with the consent of, the registered owner of the trade mark", namely Lonsdale Europe.
Accordingly, Paul's Warehouse was found to have infringed the trade marks of Lonsdale Australia.