Brother Wins Case Against Aussie Drum Distributor
December 14, 2007
Brother Industries in
Nagoya, Japan, announced that Brother Industries, Ltd. and Brother
International (Aust.) Pty Ltd. (collectively “Brother”) have been successful
in a Federal Court case against Dynamic Supplies Pty Ltd (“Dynamic Supplies”),
one of Australia’s largest distributors of computer consumables.
In 2004, Brother notified Dynamic Supplies that it was infringing Brother’s
trade marks by selling OEM printer drum units (which has different specification
than that of Brother-branded printer drum units) as Brother-branded printer
drum units.
Dynamic Supplies rejected Brother’s allegations and the matter was then
taken to court.
The Federal Court found that Dynamic Supplies imported and sold unbranded,
OEM printer drum units in counterfeit Brother packaging. Those printer drum
units were sold by Dynamic Supplies as Brother-branded DR200 printer drum
units.
The Court made two significant rulings in this case.
1
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A reseller is not permitted to apply a manufacturer’s
trade mark to OEM goods that the manufacturer did not intend to be
sold under its trade mark.
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| 2 |
If OEM goods pass through the supply chain of a subsidiary
of a trade mark owner as branded goods but without the authorization
of the trade mark owner itself, it does not follow that the trade
mark owner will be deemed to have authorized the use of its trade
mark on those goods by virtue of the conduct of its subsidiary. For
the use of the trade mark to be authorized, it must be applied with
the direct authority of the trade mark owner itself.
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<Note> This finding arose from Dynamic Supplies
putting forward a theory that the OEM units had somehow entered supply
chain of Brother's subsidiary in a country other than Australia, an
allegation that was not established to be true. |
