Trade mark infringement: who can provide consent?

Robert Cutler and Timothy Webb of Clayton Utz review the Brother Industries Ltd v Dynamic Supply Pty Ltd decision considering establishing consent as a defence to trade mark infringement.

It is a defence to infringement of a registered trade mark if the trade mark is applied to goods or services with the consent of the owner of the trade mark. According to Robert Cutler and Timothy Webb, the Federal Court decision has confirmed that consent must be obtained from the registered owner of the trade mark in Australia. The fact that goods to which a trade mark has been applied have been sourced from a related entity or member of the same corporate group as the Australian registered trade mark owner will not be sufficient to give rise to an implication, for the purposes of the defence, that the importer or seller of the goods has the necessary consent.

Australian Intellectual Property Law Bulletin (2008) 20(7)