Deceptively similar marks for parallel imported goods

Issue summary

Currently the trade mark parallel importation defence applies when a parallel importer uses the registered mark (or a substantially identical mark). However, parallel importers may wish to use a deceptively similar mark to advertise the legitimate parallel imports. For example if the registered trade mark was for "Stockport Original Quality" rendered in a red cursive font and set inside a simple square device, it may be unclear whether a parallel importer of jeans bearing this mark could use the deceptively similar mark "We are now selling genuine Stockport jeans" to advertise the parallel imports.

Comments

IP Australia doesn't have sufficient evidence of a problem to justify action at this time. IP Australia is monitoring this issue, and would welcome any relevant evidence of a problem from stakeholders.