I.

Is there international exhaustion of (i) patents; (ii) trade marks; and (iii) other industrial property rights? That is, can an industrial property right owner use industrial property rights against parallel imports from another country, when the imported products have been put on the market in that country by the industrial property right owner or with his consent?

(i)

Patents

In Australia the position is still in general terms governed by the common law principles. Sale by the Australian patentee without any conditions attached, in any other country of a product, the subject of the invention protected by the Australian patent, would confer on the purchaser of the product a licence to import the product into Australia and the Australian patentee could not object to the importation from the country of origin. His rights would be exhausted.

However if the patentee does not vend such product himself but merely grants a licence to a licensee to sell the product only within a particular country, a purchaser to whom the licensee sells product can have no better right than the licensee. He will not be able to import into Australia, free of objection from the Australian patentee, a product acquired from the Australian patentee's licensee in the licensed country. The purchaser will infringe in Australia if he so imports.

If the purchaser buys such product from an assignee of the Australian patentee the purchaser will not have the right to import the product into Australia. It is not a sale to the purchaser by the Australian patentee and the Australian patentee can sue for infringement.

(ii)

Trade Marks

Section 123(1) of the Trade Marks Act provides, in effect, that a person who uses a registered mark in relation to goods that are the same as or are of the same general description as the goods in respect of which the mark is registered does not infringe the trade mark if the mark has been applied to the goods by or with the consent of the registered owner in Australia.

Accordingly if the goods have been put onto the "billowing sea of trade" in another country by the Australian owner or with the consent of the Australian owner, as indicated in the question, the Australian owner will have exhausted his trade mark rights and will not be able to stop parallel importation of these genuine goods.

It is to be noted that by Section 7(1) of the Act use in relation to goods in the Act means use in relation to second hand goods so that parallel importation of "genuine" second hand goods will also not be able to be stopped.

(iii)

Copyright

The import and sale of articles in which copyright subsists are not intrinsic rights conferred on the copyright owner but the Copyright Act deems such acts to be indirect infringements of copyright. Thus Section 37 of the Copyright Act 1968 precludes the importation without license of works which reproduce copyright.

The section provides in effect that the copyright in a work (a literary, dramatic musical or artistic work) is infringed by a person who, without the licence of the copyright owner, imports an article into Australia for the purpose of sale, hire or otherwise for the purpose of trade or for a purpose that will affect prejudicially the copyright owner.

The Australian copyright owner even though he puts the articles on to the market in the other country will not have thereby exhausted his rights to stop importation into Australian unless it can be shown that he has consented to the importation.

On the present facts the copyright owner has not so consented.

The copyright owner will also have to show that the importer knew or ought to have known that, if the article were made in Australia, the making would have constituted an infringement of copyright. The knowledge required is knowledge of facts as would suggest to a reasonable person that a breach of copyright was being committed.

The Australian courts have not, in the absence of an express consent, been quick to infer a consent to an importation. Mere absence of any restrictions on sale in the original sale in the country of origin will not imply a licence to import into Australia.

A similar section (s.102) to Section 37 deals with the importation, without licence, into Australia of articles that would otherwise infringe the copyright subsisting in sound recordings, films, television or sound broadcasts and published editions.

The Australian courts have said that it is possible that in certain circumstances a licence for the parallel importation might be implied. For example, if the articles in question were books in which literary work copyright would subsist and the copyright owner sells a quantity of these articles in the country of origin knowing that they are to be delivered to an Australian bookseller, a licence is likely to be implied.

Generally speaking no licence to import will be implied unless on the facts of the case there is evidence from which consent can be inferred.

However it is to be noted that the Australian government in a number of recent amendments to the Copyright Act has sought, in effect, to exhaust the rights of the copyright owner in relation to certain kinds of goods. The Act as amended is broadly to the following effect:

It is no longer possible for the copyright owner to stop the importation of goods in which no copyright subsists (eg. bottles of liquor) by relying on copyright in the labels packaging or instructions (accessories) affixed to such goods.

Books

It is no longer an infringement of copyright to import, without the licence of the copyright owner, a book which is an overseas work first published after 23 December 1991 (date of commencement of amendment), for the purposes of trade.

An overseas work is a work first published outside Australia and not published in Australia within 30 days of the overseas publication.

In the case of a work first published in Australia or an overseas work first published before 23 December 1991 it is not an infringement of copyright, to import into Australia without the licence of the copyright owner, a copy of a hardback or paperback copy of a book if the importer:

has ordered copies to satisfy his reasonable requirements from the copyright owner, his licensee or agent; or

the copyright owner etc. has not within 7 days told the importer his order would be fulfilled within 90 days; or

90 days has elapsed and the order has not been fulfilled.

Further it is not an infringement to import a single copy of a book if this is required to fulfil a verifiable order of a customer and the book is not required for the purposes of trade.

Again, it is not an infringement to import two or more copies to fulfil an order from a non-profit library and the books are not required for the purpose of trade.

It is a requirement of these provisions that the book must be a non-infringing copy that is a book the making of which in a country specified in the Regulations did not constitute an infringement of copyright there.

Sound Recordings

It is no longer an infringement of the copyright in a work (literary dramatic or musical) that may be included in sound recording (meaning the aggregate of sounds embodied in a record disc, tape paper or other device) to import into Australia a non-infringing copy of a sound recording of the work.

It is not an infringement of the copyright in the sound recording to import into Australia a non-infringing copy of the sound recording.

At the time of importation the sound recording must have been published in Australia or in another country by or with the consent of the owner of the copyright in that country. It must also be a non-infringing country, that is, it must have been made with the consent of the copyright owner in the country where the copy was made. Special provisions exist to cover the situation where there is no provision for copyright in the country of publication or manufacture.

These provisions erode considerably the rights of the copyright owner to prevent the parallel importation of goods which indirectly infringe his copyright.

(iv)

Designs

Section 30(1)(b) of the Designs Act 1905 provides in effect that it is an infringement of the monopoly in a registered design to import into Australia, without the licence or authority of the registered design owner (person registered under the Act as such), for the purposes of trade, any article in respect of which the design is registered, or to which the design, or any fraudulent or obvious imitation, has been applied outside Australia, without the licence or authority of the person who was the owner of the registered design at the time of such application.

It appears therefore that the rights of the design owner to preclude the parallel importation will have been exhausted since whilst there has been no consent to the importation there has been consent to the application of the design to the articles, even if that consent has not specifically been given for Australia.

2.(a)

Can contractual restrictions imposed by an industrial property right owner be used to limit the effect of international exhaustion?

(i)

Patents

The exclusive rights given to a patentee by his grant entitles him to impose post-sale restraints on the use which may be made of products the subject of the invention, by a purchaser.

The patentee could, by imposing such restraints, prohibit the importation of products, the subject of the invention, in one country even if they have been sold by him on to the ocean of trade in another country.

Thus it would be open to the Australian patentee to impose restrictions on the import of the patented product into Australia. He could do this by imposing restrictions on his licensees or distributors in other countries prohibiting them from selling products to or importing products into Australia. Such prohibition would usually be incorporated in the agreement between the Australian patentee and the licensee for the particular territory.

Australian anti-trust law may however have a bearing on the issue. The Trade Practices Act outlaws provisions in agreements which have the effect of substantially lessening competition (Section 45) or which amount to exclusive dealing (Section 47).

Savage penalties are imposed for breaches of the Act.

However the Act (Section 51(3)) exempts from these prohibitions the imposing or giving effect to a condition in a licence granted by the owner of a patent to the extent that the condition relates to the invention or articles made using the invention.

It is arguable as to whether this exemption would apply to a restriction on the overseas licensee selling goods into Australia as it does not relate to the invention. It may, however, be seen as relating to the goods. It is to be noted that the Act has an extra territorial operation.

The issue would then, in effect, be whether the restriction would have the effect of substantially lessening competition in a market in Australia. This issue would have to be determined in accordance with the facts of the case. However there is here an example of a possible conflict between intellectual property and anti-trust rights.

(ii)

Trade Marks

A trade mark is still a badge of origin and not of control. If the mark has been applied in another country by or with the consent of the Australian owner of the mark to products then, as has been noted, importation of such genuine products will not constitute infringement in Australia.

It would be open to the trade mark owner to impose a condition on a licensee of the mark in another country that goods bearing the mark not be sold or imported into Australia. It would seem that if importation occurred the trade mark owner's right would be for breach of contract by the licensee and not for trade mark infringement.

A similar issue in relation to the Trade Practices Act, would arise in respect of any such condition.

It would have to pass the competition test namely whether it would have the effect of substantially lessening competition in a market in Australia.

There is an exemption in Section 51(3) in respect of the inclusion in contracts between the registered proprietor and an authorised user of the mark of a provision to the extent that it relates to the kinds quantities or standards of goods bearing the mark that may be produced or supplied.

The licensee on whom the condition is improved might not be an authorised user of the mark in Australia. Further it does not appear that the condition relates to the kind, quality or standards of the goods. The exemption would not therefore seem to apply and the validity of the attempt to shore up the exhausted rights by this device would have to be reviewed under the anti-trust law.

(iii)

Copyright

In view of the reluctance of the courts to imply licences in relation to importation where there is no express consent, the need for contractual restrictions is less pressing.

As with the other rights an agreement could be made with the licensee in the country of origin although it is understood that any restriction on where the purchaser might sell could in the US contravene anti-trust laws.

The exemption in Section 51(3) in relation to such a restriction will only apply if the condition relates to the work in which copyright exists. Arguably it does.

(iv)

Designs

In relation to registered designs the consent of the design owner is required not only to the importation but also to the application of the design to the article.

Section 30(1)(b) catches the importation of "pirate" goods since the design owner will not have consented to their importation.

As far as genuine goods are concerned they will not be caught by the section and the rights of the design owner will be exhausted.

However it may be possible to include in the licence with the licensee in the other country a restriction on importation into Australia.

Again trade practices issues could arise. The exemption in Section 51(3) applies to conditions which relate to goods in respect of which the design is registered and to which it applies. Arguably the exemption will apply as the restriction relates to the goods.

2.(b)

What is the effect of breach of contractual restriction by a purchaser - does exhaustion occur?

It would appear that the response will vary according to the nature of the right. In the case of an Australian patent, if the purchaser / licensee were to import the "genuine" product in breach of his contract with the Australian patentee, he would be infringing the patent by such importation as would any Australian purchaser. The rights of the Australian patentee would not then be exhausted. The importer would also be liable to an action for breach of contract.

In the case of a trade mark the importation of the genuine product would not infringe the Australian trade mark and the rights of the trade mark owner are exhausted. The trade mark owner would however have a claim for breach of contract against the importer.

Section 37 of the Copyright Act will render any importation of goods even if genuine, an infringement of copyright as there can be no issue of consent to the importation. The copyright owner's rights to sue for infringement will not have been exhausted provided he can establish that the importer know or ought to have known that the making of the article, if made in Australia, would have infringed copyright.

In the case of the registered design, the importation of genuine goods will not constitute infringement of the design but the importer would be liable for breach of contract.

3.(a)

If contractual restrictions can be used to limit importation, does it matter whether they are express or implied?

It does matter from the point of view of proof. Obviously if there is a clear provision in an agreement it will be easier to establish a case that there has been a breach of the restriction. The existence of an express restriction avoids arguments that, because there is no express restriction, a licence or consent should be inferred. The courts in Australian have in any case been slow to infer any consent in these circumstances.

3.(b)

If contractual limitations are express, are there any particular marking requirements?

No

3.(c)

If protected products are marked to indicate some marketing restriction, what are the consequences of removal or loss of any marking?

Not applicable

4.

Does international exhaustion of industrial property rights apply where a product has been put on the market under a compulsory licence (if applicable?).

Goods may be required to be put on the market overseas pursuant to a compulsory licence and those goods may then subsequently be imported into Australia. In these circumstances, it will be a question of fact whether the IPR owner can prevent the import of the relevant article into Australia. There is an argument to be made that there should be no international exhaustion of rights where the first sale by the IPR owner is not voluntary. The extent that the ability to prevent parallel importation into Australia is a matter of implied licence (arising by reason of sale overseas without restriction) then sale occurring on an involuntary (compulsory ) basis should, as a matter of fairness it could be argued, not amount to an implied licence allowing the purchaser to export those articles to Australia. The converse argument, of course, is that once goods have been released in an overseas market for any reason (under a compulsory licence or otherwise) there is no reason why consent should not be implied permitting the purchaser to deal with them as he deems fit. This issue has not been judicially determined in Australia.

5.

Is "consent" which gives rise to exhaustion limited to specific arrangements, (for example a relationship with a subsidiary or affiliated company, or an arrangement with a licensee), or a question of fact in each case?

The Australian approach generally

The Australian government has over the past five years generally taken an adverse position against IPR owners dividing up their intellectual property rights into different geographic markets. This pro-parallel importer approach is reflected in a number of relatively recent legislative changes to Australia's trade mark and copyright legislation which favour the principle of international exhaustion.

Patents

Summary

In the context of patent law, consent, which gives rise to exhaustion, is a question of fact in each case. Some scenarios are provided below.

Scenario 1- If the Australian patentee and the foreign patentee are different parallel importation can be stopped.

The decision in Betts v Willmott⁽¹⁾ is thought to be good law in Australia. Betts v Willmott was to the effect that where a patentee sells a patented article in one territory without placing any restriction upon the resale of the good then the purchaser acquires absolute title to the article and is entitled to deal with it thereafter as he or she pleases.

Scenario 2- Where the Australian patentee and the foreign patentee are related companies.

In this scenario, a court may lift the corporate veil and hold that the related corporation is bound by the actions of the patentee as if they were the same person. This approach has been taken in the trade mark area in the English Revlon⁽²⁾ case.

Scenario 3- Where the Australian patentee is the foreign patentee and there is a restriction on resale imposed, the parallel importation can be stopped if the purchaser has notice of the restriction upon resale of the goods.

Lord Hatherley in Betts v Willmott⁽³⁾ said that to rebut the presumption that a purchaser of a patented article has obtained clear title to the goods:

"there must be some clear and explicit agreement to the contrary to justify the vendor in saying that he has not given the purchaser his licence to sell the article, or to use it wherever he pleases as against himself."

The ability to impose a restriction upon the resale of a patented article has been confirmed in at least one early Australian case:

In National Phonograph Company of Australia Limited v Menck,⁽⁴⁾ the Privy Council (on appeal from the High Court of Australia) considered the ability of a patentee to impose conditions upon the resale of patented goods. This case did not consider the issue of parallel importation, or geographical restrictions upon the resale of goods, but instead considered whether conditions relating to the minimum price for which the goods could be sold were effective. The court held that where the person bought the patented goods with full knowledge of the conditions to be imposed then the conditions were effective.

"All that is affirmed is that the general doctrine of absolute freedom of disposal of chattels of an ordinary kind is, in the case of patented chattels, subject to the restriction that the person purchasing them, and in the knowledge of the conditions attached by the patentee, which knowledge is clearly brought home to himself at the time of sale, shall be bound by that knowledge and accept the situation of ownership subject to the limitations."⁽⁵⁾

This approach was followed in the U.K by Simonds J of the Chancery Division of the High Court of Justice in Hazeltine Corporation v Lissen Ltd⁽⁶⁾ and by the Full Court of Appeal, Chancery Division, in Gillette Industries Ltd v Bernstein.⁽⁷⁾

Scenario 4- Where the Australian patentee is also the foreign patentee and a licence is granted under the foreign patent only, parallel importation can probably be stopped.

Where a licensee has been given a licence to produce goods under a foreign patent but not under a corresponding Australian patent then there is a presumption that the patentee only intended to licence rights existing under the patent in the foreign country.

In Societe Anonyme des Manufactures de Glaces v Tilghman's Patent Sand Blast Company⁽⁸⁾ Tilghman owned patents in Belgium and England for ornamental glassware. Tilghman granted the appellant "full and entire liberty, power and authority during the continuance of the patent for the term of 20 years to employ said invention and to put it into practice for all articles of glassware ... at its manufactory of Vel St-Lambert, and not elsewhere...". In considering whether the appellant had the right to sell the items that it produced in England Lindley LJ said:

"Now if I could find in this agreement any reference whatever to England or any indication that the grantor conveyed or purported to convey any right whatever to make or do anything in England, I should then feel the full force of the appellant's contention that the defendants were derogating from their own grant. But I cannot find anything of the kind."⁽⁹⁾

The court took the approach that unless anything were said to the contrary, the rights granted were only rights under the patent in Belgium.

Status of a purchaser of goods from a licensee

In the New Zealand case of Briscoe & Co v Washburn and Moen Manufacturing Company,⁽¹⁰⁾ Williams J considered that the approach in Tilghman was consistent with Betts since a vendor transfers all such rights that it has in the patented article.

Effectively, Williams J held that even without notice of any restrictions a purchaser could only receive the rights enjoyed by a licensee, not by the patentee who had given the licensee only limited rights.

William J's decision was upheld on appeal with only one of the judges referring to notice. Connolly J said that the New Zealand merchant knew that Washburn held a New Zealand patent and that therefore they would have known that the licence in the United States would have placed a restriction on use in New Zealand. This is a broad proposition which may not be followed in Australia.

If this case is correct, the onus is placed on a purchaser of patented article in these circumstances to find out whether the goods that it purchased were sourced from a licensee under a licence which restricted the ability to sell the goods.

Rudd J (without being referred to Briscoe) took the same approach in Beecham Group Limited v Shewan Tomes (Traders) Limited⁽¹¹⁾ in the Kenyan High Court. His Honour held that a sale of goods produced under a licence granted under American and Panamanian patents could not free the articles from the monopoly that existed in Kenya under the Kenyan patent. The argument of Shewan Tomes that purchasing the goods from the licensee without notice of the conditions gave full rights under Beecham's patents without restrictions was rejected.

The decision of VC George J of the Malaysian High Court (Kuala Lumpur) in Smith Kiln & French Laboratories Ltd v Salaam (Malaysia) Sen BHP⁽¹²⁾ is to the contrary. In this decision his Honour considered whether goods bought from associated companies (in effect in the position of licensees) were subject to restrictions. His Honour considered that this depended on whether or not the goods were accompanied by express notice of the restrictions.

Trade Marks

Summary

In the context of trade marks, the doctrine of international exhaustion is statutorily entrenched in Australian trade mark law.

Section 123(1) of the Trade Marks Act 1995 (Cth) introduced the concept of exhaustion of rights into Australia's trade mark legislation so that the act of marking the goods and putting them onto the market "exhausts" the proprietor's capacity to control any subsequent dealings in those goods.⁽¹³⁾

Section 123(1) provides that where a person uses a mark in relation to goods or services which are similar to those in respect of which the mark has been registered, this does not constitute trade mark infringement if the mark has been applied to or in relation to the goods or services by or with the consent of the registered owner.

One way that a trade mark owner may attempt to overcome this is for a foreign company to assign its registered Australian trade mark to an Australian distributor. This tactic has proven to be effective in the past,⁽¹⁴⁾ however, following a recent decision,⁽¹⁵⁾ it is unclear whether such arrangements are truly effective to prevent parallel importation where the trade mark on the goods being imported has been legitimately applied by the overseas proprietor.

The recent Montana⁽¹⁶⁾ case provides important clarification of the manner in which parallel imports are to be dealt with in Australia.

Briefly, the facts giving rise to the Montana case involved attempts by a foreign manufacturer and its exclusive distributor to prevent parallel imports of tyres into Australia by the assignment, from the manufacturer to the exclusive distributor, of Australian registered trade marks for those tyres.

The facts of the case indicated that the quality of the tyres imported by the parallel importer from Singapore and sold in Australia were the same as the quality of the tyres sold for sale and sold by the exclusive distributor in Australia. There was also no material difference between the tyres offered for sale and sold by Montana and the exclusive distributor, nor did Montana alter the trade marks in any way.

On appeal, the Full Court of the Federal Court of Australia found that Montana's use of the trade marks did not amount to infringing use under the Trade Marks Act 1955 (Cth). Once the foreign manufacturer had placed its tyres bearing the trade marks onto the Singaporian market, its right to control the further disposition of those tyres was "exhausted".

Scenarios

Where the owner of the trade mark in Australia is the same company as the owner of the trade mark overseas, it is not generally possible to stop the parallel importation of genuine goods bearing the trade mark into Australia.

Where the Australian owner of a trade mark is not related to the foreign owner of the trade mark, then the Australian trade mark owner can generally prevent the parallel importation of genuine goods made overseas bearing the trade mark.

Where the Australian owner of the trade mark is related to the foreign owner of the trade mark, it is unlikely that the Australian owner can stop the parallel importation of genuine goods bearing the trade mark. In these cases, the courts have taken the view that every company in the corporate group has, in effect, consented to the use of the trade mark by every other company in the group.

An exception to that outcome may be where the goods bearing the trade mark have been manufactured by the parent or a related company overseas and are to a different specification or quality to the goods sold locally by the subsidiary.

Where the owner of the trade mark in Australia is the distributor of the foreign owner's goods, the distributor may be able to prevent the parallel importation of goods bearing the trade mark on the basis that the local company had developed an independent reputation in the trade mark by virtue of its selection of the goods it imports and the after-sales service it provides to members of the public. However, this line of argument has only had limited success.

Although the Australian position is not entirely settled, the Trade Marks Act 1995 (Cth) implies that it is not an infringement of a registered trade mark to sell the genuine goods to which the trade mark is applied as second-hand goods.⁽¹⁷⁾

Other Industrial Property Rights

Copyright

Summary

In Australia, copyright cannot be used to prevent the importation of genuine sound recordings. Copyright in the labels or packaging for goods may not be asserted to prevent the importation Australia of genuine goods. Subject to some limited exceptions,⁽¹⁸⁾ all other copyright works and subject matter other than works can only be imported for commercial distribution in Australia with the licence of the copyright owner.⁽¹⁹⁾ The Australian courts have taken a restrictive view of what constitutes the provision of a licence by the copyright owner to import material.⁽²⁰⁾ There mere act of a copyright owner of selling the copyright material overseas will not constitute an implied licence to import material into Australia.⁽²¹⁾

The law - when is consent required

Under sections 37 and 102 of the Copyright Act 1968 (Cth), a copyright owner or an exclusive licensee can control the importation into Australia of works and subject matter other than works even if the items in question have been acquired quite lawfully overseas. However, the onus is on the party alleging infringement to establish that a licence is lacking. Australian courts have been reluctant to assume consent in the case of copyright works in the absence of express authorisation by the copyright owner to parallel import the goods or the material which is subject to copyright protection.

The leading case in relation to consent in the copyright context is the Australian High Court's decision in Time-Life.⁽²²⁾ The case involved the purchase of cook books from a book wholesaler in California by the appellant who then purchased and imported the books into Australia. The respondent, who had an exclusive licence from the American publisher to publish the cook books throughout the world,⁽²³⁾ sold the books in Australia for a far greater price than the appellant. In an attempt to stop the appellant from importing the books, the respondent argued that the appellant's importation of the books into Australia constituted an infringement of copyright.⁽²⁴⁾ The appellant argued that the importation involved no infringement because it was impliedly licensed to deal with the books, having purchased them legally in the United States, and that the sale had contained no restrictive terms as to the use to which the buyer might put the books. However, since no positive licence to import had been established, the appellant was held to be in breach of the Copyright Act.⁽²⁵⁾ The provisions of sections 37 and 102 have also been utilised by the Australian courts in respect of software, records, video tapes and video games.

Recent changes to Australian copyright law

In the past year, the Australian Government introduced a number of amendments to the Copyright Act 1968 (Cth) to lift the parallel importation restrictions in relation to sound recordings and the packaging and labelling of imported goods. More recently, the Australian government has announced its intention to remove all restrictions on parallel importation of books, video games and computer software.(26)

Packaging and labelling of imported goods

The Copyright Amendment Act (No.1) 1998 (Cth), which came into effect on 30 January 2000, has largely removed the copyright owner's ability to control parallel importation through copyright in a label or package.

Formerly, the importation of products bearing labels or packaging in which copyright subsisted, without the consent of the copyright owner, was an infringement of copyright. The copyright owner could request Customs to seize such products and effectively prevent their importation.⁽²⁷⁾

The amendments to the Copyright Act provide that "the copyright in a work a copy of which is not on, or embodied in, a non-infringing accessory to an article is not infringed by importing the accessory with the article".⁽²⁸⁾ They further provide that section 38 (which makes it an infringement to do certain acts including the sale of goods in Australia, without the licence of the copyright owner) "does not apply to a copy of the work, being a copy that is embodied on, or embodied in, a non-infringing accessory to an article, if the importation of an accessory is not an infringement of copyright in the work".⁽²⁹⁾

An "accessory" includes a label, packaging, instructions, a warranty, an instructional sound recording or an instructional video.⁽³⁰⁾ Therefore, if a manufacturer has approved the use of the accessory in relation to a certain product (eg. for use in another country), then the manufacturer's copyright in the accessory is not infringed by the importation of that product into Australia (whether the manufacturer approves of the importer or not).

The accessory must be made in either a country that is a party to the Berne Convention 1886, or a country that is a member of the World Trade Organisation and provides rights consistent with the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994. Also, the copy of the copyright work must have been made under the authority of the copyright owner.⁽³¹⁾

Sound recordings

The Copyright Amendment Act (No 2) 1998 (Cth) now makes it possible to import a "non-infringing copy" of a sound recording without the licence of the copyright owner, provided that the sound recording has been published in Australia, or in another country with the consent of the copyright owner, before the date of importation into Australia. Commercial dealing in such copies after importation is also permitted.

The countries in which copies may be made for parallel importation are the same as those discussed above in relation to copyright labelling and packaging of imported goods.

A copy that was made without infringing copyright or any related right in the country of manufacture - in other words, a copy made by or with the consent of the copyright or related right owner in the country of manufacture - is a "non-infringing copy".

If there is no protection for sound recordings in the country of manufacture, a sound recording can only be a "non-infringing copy" if it was made by or with the consent of the copyright or related right owner in the country were the original recording was made or, if there is no such copyright or related right owner, by or with the consent of the maker of the sound recording.

Designs

Under Australian design law, consent, which gives rise to exhaustion is limited to circumstances where the owner is the same company in both countries. In such circumstances, the owner of the design cannot prevent parallel importation by third parties. It is also unlikely that the problem can be overcome by licensing the Australian design rights to a company in Australia. This is because section 30(2) of the Designs Act 1906 (Cth) specifically states that the owner of the registered design may bring an action for infringement of the monopoly in the design. As there appears to be no statutory basis upon which the licensee (exclusive or otherwise) is entitled to commence proceedings, it is arguable that such person has no title to sue.⁽³²⁾

However, design law in Australia can be used to prevent parallel importation where the Australian owner of the registered design is not the same as the owner of the registered design in the foreign country of export.

Circuit layout designs and plant varieties

Both the circuit layout designs⁽³³⁾ and the plant varieties legislation⁽³⁴⁾ in Australia give the IPR owner the ability to prevent parallel imports if the parallel importer does not have a licence from the IPR owner.⁽³⁵⁾ This right is, of course, limited to the relevant period of the statutory grant of the right.

6.

Can an IPR owner object to the parallel importation where (a) the goods or (b) their packaging have been modified or altered?

(a)

Where the goods have been altered

Pharmaceuticals

If the article imported still falls within the claim of the Australian patent but differs from the specification of the goods as sold by the patentee outside Australia, then it is theoretically possible to stop parallel importation by a patent infringement action. Presumably, no licence could be implied because of the alteration of the goods.

Trade Marks

Notices of prohibition- If the registered owner of a trade mark has displayed a notice of prohibition on the goods, depending on the nature of the notice, he or she can object to the importation of goods if the state of the goods have been altered. This is because under section 121(1) of the Trade Marks Act 1995 (Cth), a registered trade mark owner will have a cause of action for trade mark infringement if the owner (or the authorised user) has displayed a notice on the goods which states that certain prescribed acts are prohibited. Prohibited acts include the act of "applying the trade mark to registered goods or using the trade mark in physical relation to them, after the state, condition... in which they were originally offered to the public has been altered".⁽³⁶⁾

Goods of inferior quality- Since the Trade Marks Act 1995 (Cth) came into effect, there have been no cases on the parallel importation of goods which are of inferior quality to the same goods which are sold by the authorised distributor in the Australian market. In the English case, Colgate-Pamolive Ltd v Markwell Finance Ltd,⁽³⁷⁾ even though the imported product was a genuine Colgate product, the consent defence failed because Colgate toothpaste made in Brazil and imported in to the United Kingdom was of an inferior quality.

It is highly doubtful whether the approach taken in the Colgate decision, would be applicable in Australia in light of section 123(1) of the Trade Marks Act 1995 (Cth) which provides that, provided the trade mark is affixed to the goods with the authority or consent of the trade mark owner, then there will be no trade mark infringement - no exception is made for goods which are of inferior quality.

Other Industrial Property rights

Passing off and the Trade Practices Act 1974

Where the goods have been altered, the Trade Practices Act 1974 (Cth) may provide a cause of action if the parallel imports are of an inferior quality or if they are unsuitable for the Australian market.

A cause of action under the Trade Practices Act would be based on the grounds that the sale of parallel imported goods carry with it a series of misrepresentations.

Section 52 of the Trade Practices Act 1974 (Cth) prohibits corporations from engaging in misleading and deceptive conduct or conduct that is likely to mislead or deceive. In this context, the misrepresentations could be a result of:

• the imports being of a lower quality then the goods properly distributed within Australia;
• the manufacture's failure to provide any warranty for the goods that are not provided through the official distributor;
• the parallel importer's failure to provide any after sales service for the goods or maintain a supply source of spare parts; and
• a misrepresentation that the parallel importer is an authorised dealer.⁽³⁸⁾

In addition, section 55 of the Trade Practices Act 1974 (Cth) provides that "a person shall not, in trade or commerce , engage in conduct that is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose or the quantity of any goods".

By way of example, where imported electrical goods are not adapted to Australian voltage requirements and do not have the necessary governmental approval, it can be strongly argued that the product modification constitutes a sufficient basis for establishing an implied misrepresentation by the parallel importer.

For example, in Star Micronics Pty Ltd v Five Star Computers Pty Ltd,⁽³⁹⁾ the Federal Court of Australia held that the parallel importation of printers designed for the Asian market into Australia was a breach of copyright, involved passing off, and was a breach of sections 52 and 53 of the Trade Practices Act 1974.

The Australian distributor sold printers designed for 240V power supply, while the parallel imports were designed for 220V. The manufacturer did not offer any warranty for the products, the Australian distributor themselves provided a 12 month warranty.

The misleading and deceptive representations by the respondent company included oral representations that the goods had a warranty; the provision of an official flier was a false representation that the printer was the same as that described in the flier (ie a 240V Australian market model); and the writing of 12 months warranty on a receipt which represented that it was to be provided by the manufacturer. The receipt given to the customer which said "Warranty on retail goods shall always be that as stated by the manufacturer" did not involve any false or misleading representation.

The court also found that there was a passing off of the goods as having been produced for distribution in Australia because there was a threat to the reputation of the official distributor.

(b)

Where the packaging of goods has been modified

The ability of an IPR owner to object to parallel importation where the packaging of the goods has been modified will vary depending on the particular facts, the nature of the goods in question and the type and extent of modifications that have been made.

(1)

Patents

If the packaging of the goods have been modified this is not relevant in the patent context as patent law is generally concerned with an article itself rather than its packaging. Alteration of the packaging of the patented article should have no impact on an Australian patentee's ability to prevent parallel importation of a patented article by means of a patent infringement action.

(2)

Trade Marks

If the registered owner of a trade mark has displayed a notice of prohibition on the goods, depending on the nature of the notice, he or she may be able to object to the importation of goods if the packaging of the goods have been altered. Under section 121(1) of the Trade Marks Act 1995 (Cth), a registered trade mark owner will have a cause of action for trade mark infringement if the owner (or the authorised user) has displayed a notice on the goods which states that certain prescribed acts are prohibited. Prohibited acts include the act of "the application of the mark to various goods after their... get-up or packaging in which they were originally offered to the public has been altered".⁽⁴⁰⁾

(3)

Other industrial property rights

Copyright

If copyright subsists in the packaging then any adaptation⁽⁴¹⁾ of the copyright by the parallel importer, without the permission of the owner of the copyright, may infringe the copyright in that work, for example, if the words on the packaging were translated from one language into another.⁽⁴²⁾

Moral Rights

The Australian government is proposing to legislate for moral rights -at the time of writing, Copyright Amendment (Moral Rights) Bill 1999 (Cth) has been introduced into the House of Representatives. If moral rights legislation is ultimately passed, then it may be possible that the author of a copyright work will have the ability to prevent the distortion or alteration of a work, including a work that is embodied or displayed on the packaging of an article which prejudices his honour or reputation.⁽⁴³⁾ However, due to the narrow nature of these rights, presumably, this cause of action would only apply in extremely limited circumstances to prevent parallel importation. Moreover, moral rights are personal in nature and attach to the author - therefore an exclusive Australian distributor would have no resort to prevent the parallel importation vis-a-vis the overseas manufacturer.

Passing off and the Trade Practices Act 1974

The Trade Practices Act 1974 (Cth) may give the IPR owner a cause of action, depending on the type of modification that has been made. If, for example, if the packaging is modified so as to change the country of origin that was previously marked on the packaging, this will amount to a false or misleading representation as to the country of origin of goods which is prohibited by section 53(be) of the Trade Practices Act. Other sections include section 53(a), which prohibits false representations that goods are of a particular standard or quality and section 52 generally prohibits misleading or deceptive conduct.

A cause of action under the Trade Practices Act 1974 would be based on the grounds that the sale of parallel imported goods carry with it a series of misrepresentations. A cause of action on the grounds of passing off would be made out if the IPR owner can show that the parallel importer is passing off the business of the authorised dealer.

False Trade Descriptions

Although not strictly an industrial property right, the Australian Customs law, may, in some limited circumstances, also provide a means to prevent parallel importation. If the packaging of specified imported goods do not have the required markings at the time of importation, they may be subject to a seizure action by the Australian Customs Service.

The Commerce (Trade Descriptions) Act 1905 (Cth) and the Regulations made under that that Act require certain specified goods⁽⁴⁴⁾ to be clearly marked with a prescribed trade description that must show the country of origin, and, in most cases, a true trade

7.

As well as stating the laws in their respective countries, the groups are also invited to:

(a)

make any proposals for changes; and

(b)

offer any observations of interest on the topics raised above.

In Australia it could not be expected that any proposals to change the law to give industrial property right owners greater protection against parallel importation of genuine goods would be received with any sympathy.

As has been noted in relation to copyright substantial inroads have been made on the rights of the copyright owner to restrain the importation of books and sound recordings in the interests of "freeing up" the market and allowing Australian consumers to reap the benefit of competition.

It must be noted that under existing government policy competition is the sine qua non at the expense of intellectual property rights. The National Competition Principles Agreement, adopted by all Australian governments requires that restrictions on competition in any legislation should only be retained if the benefits outweigh the costs to the community as a whole.

The Intellectual and Property Review Committee (ICPR) has presented a report on parallel importation to the Australian Government. ICPR is charged with making recommendations to the government on the appropriate balance between competition policy and intellectual property legislation.

In the parallel importation report ICPR has recommended the removal of the remaining restrictions on parallel importation of copyright products, particularly books and software subject to a 12 month transitional period on the removal of restrictions on books to enable the book industry to adjust to the new regime.

Summary

The general thrust of the Australian laws relating to industrial property rights in Australia is to allow parallel importation rather than to prevent it. International exhaustion of industrial property rights is one way in which the Australian legislature has and will continue to allow the importation of genuine goods into Australia.

In the case of patents, unless the Australian patentee sells the product in another country subject to post-sale restraints on the use which may be made of the patented product, (such as a restriction on on-sale), the Australian patentee cannot object to the importation from the country of origin of genuine patented articles. A rare exception may arise if the imported article falls within the claim of an Australian patent but differs from the specification of the goods as sold by the patentee in Australia.

In the context of trade marks, once goods have been put onto the market in another country by or with the consent of the registered trade mark owner in Australia, the Australian trade mark owner will have exhausted his or her rights. Thus, the trade mark owner or authorised user will not be able to stop the parallel importation of these "genuine" goods unless there are exceptional or unusual circumstances. Such circumstances include:

where the Australian owner of the trade mark is not related to the foreign owner of the trade mark.

where the overseas trade mark owner has imposed a condition of licence of the mark in another country that the goods bearing the mark not be sold or imported into Australia - here the owner may be able to stop the parallel importation based on a claim for breach of contract rather than trade mark infringement.

where the goods that have been manufactured overseas and imported into Australia are of a different specification or quality to the goods sold in Australia, the trade mark owner may be able to stop the importation based on breach of the consumer protection provisions of the Trade Practices Act 1974 (Cth) relating to misleading and deceptive conduct rather then trade mark infringement.

where the authorised local distributor has developed an independent reputation in the trade mark, he or she may be able to stop the parallel importation based on an action for passing off or misleading and deceptive conduct under the provisions of the Trade Practices Act 1974 (Cth) rather than an action for trade mark infringement.

In case of copyright, the principle of international exhaustion does not generally apply to literary, dramatic, musical or artistic works (subject to some limited exceptions in respect of books). Nor does it apply to "subject matter other than works" which includes film, television or sound broadcasts and published editions. This is because the Copyright Act 1968 (Cth) provides that the copyright is infringed if a person imports the article into Australia without the licence of the copyright owner. This general rule is subject to some significant exceptions that have arisen out of recent amendments to the Copyright Act 1968 (Cth).

These exceptions apply to labelling and packaging of goods and sound recordings and make it no longer possible for the copyright owner to stop the parallel importation of goods in which no copyright subsists by relying on the copyright in the labels, packaging or instructions (accessories) affixed to such goods. It is also no longer possible to prevent the importation of "non-infringing" copies of sound recordings.

The rights of copyright owners to prevent parallel importation of goods based on copyright laws may be even further eroded as the Australian Government has recently announced its intention to remove existing restrictions on the parallel importation of books, video games and computer software.

In the case of designs, so long as the application of the design has been applied with the consent of the owner, the rights of the design owner to preclude the parallel importation will be exhausted.

In the case of the plant breeders' rights and circuit layout rights, the rights of the owner are not exhausted by putting the goods on the market as the Circuit Layouts Act 1989 (Cth) and the Plant Breeder's Rights Act 1994 (Cth) each give rights owners the ability to prevent the importation of the goods if the importer does not have a licence from the owner.

Résumé

L'idée générale des Lois Australiennes sur les droits de la propriété industrielle en Australie est plutôt de permettre l'importation parallèle que de la prévenir.

L'extinction internationale des droits de la propriété industrielle est une voie dans laquelle le législateur australien a et continuera afin de permettre l'importation de produits authentiques en Australie.

Dans le cas de brevets à moins que le breveté Australien ne vende le produit dans un autre pays sujet à des restrictions d'après-vente sur l'emploi qui peut être fait de ce produit breveté, (telle qu'une restriction sur la revente), le breveté Australien ne peut pas objecter à l'importation venant du pays d'origine d'articles brevetés authentiques .Une exception assez rare peut se produire si l'article importé tombe dans la catégorie d'une demande de brevet Australien mais différe des specifications des produits vendus par le breveté Australien.

Dans le contexte des marques déposées, une fois que les produits ont été mis sur le marché dans un autre pays par ou avec le consentement du propriétaire de la marque déposée en Australie, le propriétaire Australien de la marque aura renoncé à ses droits.En conséquence le propriétaire de la marque ou son utilisateur autorisé ne sera plus en mesure d'être capable de stopper l'importation parallèle de ces produits authentiques à moins qu'il n'y ait des circonstances exceptionnelles ou inhabituelles.Ces circonstances peuvent être les suivantes:

où le propriétaire Australien de la marque n'est pas associé avec le propriétaire étranger de la marque.

où le propriétaire étranger de la marque a imposé une condition de licence de la marque dans un autre pays mentionant que les produits portant la marque ne soient pas vendus ou importés en Australie.Ici le propriétaire peut être capable de stopper l'importation parallèle basé sur une demande pour rupture de contrat plutôt que sur une infraction sur les marques déposées.

où les produits qui ont été fabriqués à l'étranger et importés en Australie sont de spécifications ou qualités différentes de celles vendues en Australie,alors le propriétaire Australien de la marque peut être capable de stopper l'importation en engageant une action basée sur les dispositions de la protection des consommateurs du Code de Commerce, le Trade Practices Act 1974(Cth(45) ), basé sur la tromperie et induire en erreur plutôt que sur une contrefaçon à une marque déposée.

où le distributeur autorisé local a developpé une réputation indépendante de la marque, ce dernier peut être capable de stopper l'importation en engageant une action basée sur les dispositions du Code de Commerce ,le Trade Practices Act 1974(Cth) basé sur le fait de"faire passer un produit pour un autre", ou sur une conduite visant à tromper et à induire en erreur plutôt que sur une action basée sur une infraction à une marque déposée.

Dans le cas de droits d'auteurs, le principe international d'extinction ne s'applique généralement pas aux œuvres littéraires, dramatiques, musicales ou artistiques (sauf à des exceptions limitées dans le cas de livres). Il ne s'y applique pas à des "sujets autre que les œuvres" qui comprennent les films,les émissions diffusées de télévision et de radio et les publications.Ceci parce que la Loi sur les droits d'auteurs, le Copyright Act 1968(Cth), indique qu'il y a une infraction aux droits d'auteurs si une personne importe l'article en Australie sans une autorisation de licence du propriétaire du droit d'auteur.Cette règle générale est sujette à quelques exceptions importantes qui découlent d'amendements à la loi, le Copyright Act 1968 (Cth).

Ces exceptions s'appliquent à l'étiquetage et l'emballage de produits d'enregistrements. Et le propriétaire du droit d'auteur ne peut plus stopper l'importation parallèle de produits sur lesquels il n'y a plus de droits d'auteurs juste en s'appuyant sur ces droits d'auteurs sur les étiquettes, les emballages ou les instructions(ou sur les accessoires)annotées sur ces produits. Il n'est plus possible aussi de s'opposer à l'importation d'enregistrements qui ne sont pas de copies illégales. Les droits des propriétaires de droits d'auteur concernant la prévention d'importation parallèle de produits basés sur les Lois des droits d'auteurs peuvent même être réduits parce que le gouvernement australien a anoncé récemment son intention d'enlever les restrictions qui existent sur l'importation des livres, des jeux vidéos et des logiciels d'ordinateurs.

Dans le cas de stylique (design) aussi longtemps que l'application de la conception a été utilisée avec le consentement du propriétaire, les droits du propriétaire du design à empêcher l'importation parallèle sont éteints.

Dans le cas des droits des éleveurs de plantes et de conception des plans de circuits, les droits de ces propriétaires ne sont pas éteints lorsqu'ils mettent leurs produits sur le marché. La Loi sur la conception des circuits , le Circuit Layouts Act 1989 (Cth), et la loi sur les éleveurs de plantes , le Plant Breeder's Rights Act 1994 (Cth), donnent dans les deux cas aux propriétaires de ces droits la possibilité de prévenir l'importation de produits si l'importateur n'a pas de licence du propriétaire.

Zusammenfassung

Australische gewerbliche Schutzrechte zielen in Australien darauf ab, gleichartige Parallelimporte zu erlauben statt sie zu verbieten. Die internationale "Ausschöpfung" und der damit zusammenhängende Verfall gewerblicher Schutzrechte ist eine Vorgehensweise, mit der die australische Legislative den Import unverfälschter Produkte in Australien erlaubt hat und weiter erlauben wird.

Wenn im Fall von Patenten der australische Patentinhaber das Produkt in einem anderen Land mit nach dem Verkauf gültigen Auflagen zur Verwendung des patentierten Produkts (z.B. Weiterverkaufsbeschränkungen) verkauft, kann der australische Patentinhaber keinen Einspruch gegen den Import unverfälschter, patentierter Artikel aus dem Ursprungsland erheben. Eine seltene Ausnahme kann sich ergeben, falls der importierte Artikel in den Schutzumfang eines australischen Patents fällt aber ansonsten von der Patentbeschreibung der Güter abweicht, wie sie vom Patentinhaber in Australien verkauft werden.

Im Zusammenhang mit Warenzeichen gilt: sobald Güter in einem anderen Land durch oder mit Zustimmung des Eigentümers des in Australien eingetragenen Warenzeichens auf den Markt gebracht worden sind, hat der australischen Warenzeicheninhaber seine Rechte ausgeschöpft. Der Warenzeicheninhaber oder der autorisierte Benutzer kann den Parallelimport dieser "unverfälschten" Güter nicht unterbinden, es sei denn, es liegen außergewöhnliche oder unübliche Umstände vor. Solche Umstände liegen vor:

wenn der australische Eigentümer des Warenzeichens nicht in irgendeiner Beziehung mit dem ausländischen Eigentümer des Warenzeichens steht;

wenn der ausländische Warenzeicheninhaber eine Lizenzierungsbedingung für die Marke in einem anderen Land aufgestellt hat, daß nämlich die die Marke tragenden Güter nicht in Australien verkauft oder importiert werden dürfen - in diesem Fall kann der Markeninhaber den Parallelimport unterbinden durch Klage wegen Vertragsbruch statt einer Verletzung des Warenzeichens;

wenn die außerhalb Australiens hergestellten und in Australien importierten Güter in ihrer Art oder Qualität von den in Australien verkauften Gütern abweichen, kann der Warezeicheninhaber den Import unterbinden aufgrund der Bestimmungen zum Verbraucherschutz im Trade Practices Act 1974 (Cth), die sich auf irreführendes und täuschendes Vorgehen beziehen, statt sich auf Warenzeichenverletzung zu berufen;

wenn der lizenzierte örtliche Verkäufer unabhängiges Ansehen in Bezug auf das Warenzeichen entwickelt hat, kann er den Parallelimport unterbinden mit Hilfe einer Klage wegen Ursprungstäuschung oder irreführendes Verhalten oder betrügerische Machenschaften, wie dies in den Bestimmungen des Trade Practices Act 1974 (Cth) vorgesehen ist, statt ein Gerichtsverfahren wegen Warenzeichenverletzung einzuleiten.

Im Falle des Urheberrechts läßt sich das Prinzip der internationalen Rechtsausschöpfiung nicht allgemein auf literarische, schauspielerische, dramatische, musikalische oder künstlerische Werke anwenden (mit einigen begrenzten Ausnahmen in Bezug auf Bücher). Auch gilt dieses Prinzip nicht für "nicht Werke betreffende Gegenstände", wozu Film, Fernsehen oder Radiosendungen und veröffentlichte Ausgaben gehören. Dies ist eine Folge davon, daß der Copyright Act 1968 (Cth) vorsieht, daß das Urheberrecht verletzt wird, falls eine Person den Artikel in Australien ohne Genehmigung des Eigentümers des Urheberrechts einführt. Einige wesentliche Ausnahmen dieser Regel haben sich durch vor kurzem eingeführte Änderungen des Copyright Act 1968 (Cth) ergeben.

Diese Ausnahmen beziehen sich auf die Kennzeichnung, Etikettierung und Verpackung von Gütern und Tonaufzeichnungen und ermöglichen es dem Eigentümer des Urheberrechts nicht mehr, den Parallelimport von Gütern zu unterbinden, für die kein Urheberrecht besteht, einfach unter Bezugnahme auf des Urheberrecht an den an solchen Gütern angebrachten Etiketten, ihren Verpackungen oder Anweisungen (Zusatzmaterialien). Auch ist es nicht mehr möglich, den Import "nicht verletzender" Kopien von Tonaufzeichnungen zu verhindern. Die Rechte von Eigentümern von Urheberrechten, den Parallelimport von Gütern mit Hilfe der Urheberrechte zu unterbinden, dürften noch weiter geschmälert werden, da die australische Regierung jüngst ihre Absicht verkündet hat, existierende Einschränkungen des Parallelimports von Büchern, Videospielen und Computer Software aufzuheben.

Wenn im Fall von Geschmacksmustern diese mit Zustimmung des Mustereigentümers verwendet werden, sind die Rechte des Eigentümers, den Parallelimport zu verbieten, voll ausgeschöpft.

Im Fall der Rechte von Pflanzenzüchtern und den Rechten an Schaltungsanordnungen, werden die Rechte der Eigentümer nicht ausgeschöpft durch Vermarktung der Güter, da der Circuit Layouts Act 1989 (Cth) und der Plant Breeder's Rights Act 1994 (Cth) den jeweiligen Eigentümern die Möglichkeit gibt, den Import der Güter zu verhindern, falls der Importeur keine Lizenz des Eigentümers hat.

(1)(1871) LR 6 Ch App 239.

(2)Revlon Inc. v Cripps Limited [1980] FSR 85. In this case, the English Court of Appeal held that if a mark has been applied overseas by a company which is part of the same corporate group as the local trade mark owner and a third party imports goods bearing that mark, this does not constitute trade mark infringement of the local trade mark as long as the mark on the imported good is genuine.

(3)Supra, n. 1.

(4)[1911] AC 336.

(5)348-9 per Lord Shaw.

(6)(1939) 56 RPC 62.

(7)[1942] Ch. 45.

(8)(1883) 25 Ch.D 1 (CA).

(9)(1883) 25 Ch.D 1 (CA).

(10)(1891) 10 NZLR 85.

(11)[1968] RPC 129.

(12)(1989) 15 IPR 677.

(13)The Act came into effect on January 1 1996.

(14)See Fender Australia v Bevk (1989) 15 IPR 257.

(15)Transport Tyre Sales Pty Ltd v Montanta Tyres Rims & Tubes Pty Ltd (1999) 93 FCR 421.

(16)Transport Tyre Sales Pty Ltd v Montanta Tyres Rims & Tubes Pty Ltd (1999) 93 FCR 421, which was an appeal of the judgement of Wilcox J in Montana Tyres Rims & Tubes Pty Ltd v Transport Tyre Sales Pty Ltd (1998) 41 RPR 301.

(17)See section 123(1) of the Trade Marks Act 1995 (Cth). However if, as a result, the manufacturer is identified with any inferior quality of the goods which results from wear and tear or any reconditioning, a cause of action may arise for false representations or misleading and deceptive conduct under the Trade Practices Act 1974 (Cth) - this is discussed further below.

(18)These relate to books "first published in Australia": section 44A of the Copyright Act 1968 (Cth).

(19)It is worth noting at the outset that in the context of copyright infringement, that although the word "licence" is used in the infringement provision of the Act, the terms "licence", "consent" or "permission" have been treated by the Australian courts as interchangeable terms. See the comments of Bowen CJ in Time-Life International (Nederlands) BV v Interstate Parcel Express Co Pty Ltd (1976) 12 ALR 1 at 10.

(20)Interstate Parcel Express Co Pty Ltd v Time-Life International (Nederlands) BV (1977) 138 CLR 534; Computermate Product (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 12 RPR 487.

(21)Interstate Parcel Express Co Pty Ltd v Time-Life International (Netherlands) VV (1977) 138 CLR 534.

(22)Interstate Parcel Express Co Pty Ltd v Time-Life International (Netherlands) VV (1977) 138 CLR 534.

(23)Except for North America.

(24)By virtue of sections 37 and 38 of the Copyright Act 1968 (Cth).

(25)McKeogh and Stewart, "Intellectual Property in Australia", Second Edition: 1997: Reed International Books Australia Limited trading as Butterworths: Australia, page 205.

(26)In June this year, the Intellectual Property and Competition Review Committee released a Report on "Parallel Importing under the Copyright Act 1968". The Report recommends the repeal of the parallel importation provisions in the Copyright Act 1968 with a 12 month transition period for books and can be located at "www.ag.gov.au/ipcr/mainreport.html".

(27)For example, in R & A Bailey & Co Ltd v Boccaccio Pty Ltd & Pacific Wine Co Pty Ltd (1986) 4 NSWLR 701, an Irish manufacturer had a distribution agreement with an Australian company to import Bailey's Irish Cream. Competitors imported Bailey's Irish Cream from the Netherlands at a lower cost. To stop the parallel importation, the approved distributor in Australia asserted copyright in the label and successfully took legal action against the parallel importer for breach of copyright - the effect of which was to restrict the right to import the whole product.

(28)Section 44C(1) of tghe Copyright Act 1968.

(29)Section 44C(2) of the Copyright Act 1968.

(30)Sub-sections 10(f) and (g) of the Copyright Act 1968 (Cth).

(31)See definition of "non-infringing accessory" in section 10(1) of the Copyright Act 1968.

(32)See J. Phillips, "Protecting Designs Law and Litigation", The Law Book company Limited, 1994, Australia, 111.

(33)Circuit Layouts Act 1989 (Cth).

(34)Plant Breeder's Rights Act 1994 (Cth).

(35)Section 19 of the Circuit Layouts Act 1989 (Cth) provides that a person who owns the "EL right in an eligible layout, being the right referred to in paragraph 17(c), is infringed by a person who, during the period of protection of the layout, without the licence of the owner, commercially exploits or authorises the exploitation of the layout in Australia if the person knows or ought reasonably to know that he or she is not licensed by the owner of that right to do so". (Section 17(c) refers to the exclusive rights "to exploit the layout commercially overseas"). Section 11 of the Plant Breeder's Rights Act 1994 (Cth) provides that all plant breeder's rights include the exclusive right to import and export the material.

(36)Section 121(2)(a) of the Trade Marks Act 1995 (Cth).

(37)[1988] R.P.C. 283.

(38)If however, a parallel importer notifies the public that it is not the authorised dealer, it is not providing after-sales service, warranties and guarantees and provides the correct place of origin of the goods, it is unlikely that the local distributor will have an action based on passing off or breach of the consumer protection provisions of the Trade Practices Act 1974(Cth) as no confusion will arise. The practice of placing such notices upon goods which have been parallel imported into Australia is becoming increasingly common.

(39)(1990) 18 IPR 225.

(40)Subsection 1121(2)(a). Other relevant prohibited acts include altering, obliterating or partly removing the mark: subsection 121(1)(b).

(41)Under section 31(a)(1)(vii) of the Copyright Act 1968 (Cth), owners of the copyright in a literary, dramatic or musical work have the exclusive right to adapt the copyright in these works.

(42)Under section 10(1) of the Copyright Act 1968, the definition of an adaptation includes a translation of a literary work from one language into another.

(43)The Bill gives the author of the copyright work the right of attribution of authorship, a right against false attribution and a right of integrity of authorship.

(44)Such goods include pre-packed goods, textile products, some leather goods, kitchenware, electrical appliances and medicines.

(45)Cth = Cimmonwealth.