Importation can constitute infringement, confirms court

Australia

In Playboy Enterprises International Inc v Hong, the Federal Court of Australia has confirmed that the mere importation of goods bearing marks substantially similar to the registered trademark of another party, where the importer has intent to sell those goods, is an infringement of the mark.

An individual named You Tao Hong sought to import into Australia 3790 mobile telephone housings or face plates bearing Playboy Enterprises International Inc's RABBIT HEAD device mark. The goods were seized by customs officers.

Hong did not voluntarily consent to the forfeiture of the goods and so Playboy brought legal proceedings before the Federal Court in relation to the infringement or threatened infringement of its rights. In the resulting case, although it was not crucial to the relief sought, Justice Lindgren reviewed various authorities and rendered a decision on the issue of whether the mere importation with intent to sell is an infringement of a registered trademark.

For an infringement to occur, Australian law requires that there is use of an offending sign as a trademark. There is no provision explicitly stating that the importation of goods intended for sale is an infringement and there is arguably scope for contention as to whether, prior to any further dealings in the goods, their importation alone infringes a trademark registration.

Lindgren reviewed prior authorities and was able to establish a line of cases, based on judgments dating back as early as 1871, which indicate that importation for sale is an infringement. Consequently, not only is the trademark owner entitled to relief in such cases, but a declaration of infringement is also justified.

In the present case, Lindgren was able to infer that Hong intended to sell the seized goods because "a person does not import 3790 mobile telephone face plates for private or domestic use".

Sean McManis, Shelston IP, Sydney

Get unlimited access to all WTR content