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  • #984847
    Keith P
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    Hi All,

    I’ve recently entered an exclusive distributor agreement with an overseas manufacturer. It states my right to use and market the brand in Australia.

    The manufacturer had previously traded solely with a local distributor for over 20 years. This distributor has used the brand all those years and has recently registered it as a trademark in Australia. I have no registered trademark rights in Australia.

    I recently found out that the the overseas manufacturer, too, has no registered trademark rights in Australia.

    Since I am relying on my agreement with the manufacturer, my question is: does my exclusive distribution agreement override a registered trademark?

    Also, is the other distributor’s registration valid? Can’t I, or the manufacturer, challenge it?

    Many thanks in advance.

    #1149900
    Anonymous
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    If it were a design IP or a patent you could have it cancelled on th grounds that the IP was already in the public domain. I am not sure with a trademark off the top of my head, just check it out on the IP Australia website, shouldn’t take long to figure out where you stand.

    #1149901
    Kennethti
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    There are only very limited situations where you can seek to remove a mark from the trade marks register. You should speak with your solicitor or an IP specialist with regards to this matter.

    #1149902
    JacquiPryor
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    Hi Keith

    Since I am relying on my agreement with the manufacturer, my question is: does my exclusive distribution agreement override a registered trademark?

    Short answer is no. The agreement won’t trump a trademark.

    Also, is the other distributor’s registration valid? Can’t I, or the manufacturer, challenge it?

    As Kenneth has advised, there are only limited circumstances where you could have a registered trademark removed or revoked. Firstly, are you positive it is registered (versus a new application)? If it’s still a pending application it may still have an opposition period coming up, during which you / overseas supplier could challenge.

    If it is fully registered already, then any action to remove it could be costly/time consuming. You could ask the government to remove it on the grounds it was not registered in good faith and has not been used in good faith, but, the trademark holder could challenge your request; thus commencing a drawn out process. Alternatively, really, the only way to have it removed would be by court order… unless you could get this guy to withdraw the registration.

    That said, the manufacturer could still file their own application in Australia, and, may very well be able to get the mark registered despite the other person already having done so on the grounds they have prior rights. If they were successful in gaining their own registration then the other guy could not take action against them for trademark infringement.

    I hope the above provides some food for thought.

    #1149903
    Keith P
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    Jacqui, yes the mark is fully registered by the other distributor.

    In relation to the overseas manufacturer, you mentioned that it may well achieve registration in Australia on the basis of “prior rights”. The thing is, whilst the manufacturer had used the mark overseas, it had not used it in Australia prior to trading with the first Australian distributor. Nor did it have a prior reputation in Australia.

    In other words, the mark was first used in Australia by the first distributor. Could the manufacturer still have a chance at a successful registration of the mark in Australia?

    #1149904
    MH08
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    From my understanding (I parrellel import), the manufacturer must declare in writing thoroughly that you are the exclusive holder or they must attempt to own the trademark themselves. In saying that, this will not stop another company importing the same product you have unless the patent/trademark is well constructed.

    Review the Lonsdale vs Paul’s warehouse case.

    #1149905
    JacquiPryor
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    Hi Keith,

    “Use” of a trademark can include the licensing of the use to someone else. So, the manufacturer may be able to establish its use as effectively being the distributor’s use. i.e. they were using the mark by licensing it to this other party. Some evidence of the overseas use could also be provided to demonstrate its case.

    Basically, a distributor’s use is use by the actual owner/manufacturer.

    Hope this helps and feel free to get in touch if you need assistance.

    #1149906
    Keith P
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    Jacqui, thanks for clearing that up. So if the manufacturer is successful in registering the mark here, then it may licence me to use the mark, I won’t be infringing the other distributor’s mark.

    #1149907
    JacquiPryor
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    Hi Keith,

    In a nutshell – yes.

    Noting that it takes a minimum of 7.5 months to fully register a trademark in Australia so you may find during that time the “other distributor” contacts you with claims of infringement – so you might still need to defend against those allegations. I would suggest in this case it would be done in conjunction with the manufacturer, and with a view of the other distributor voluntarily withdrawing their registration.

    #1149908
    Keith P
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    My understanding is that the other party will definitely not voluntarily withdraw it’s registration.

    #1149909
    JacquiPryor
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    Keith P, post: 172390 wrote:
    My understanding is that the other party will definitely not voluntarily withdraw it’s registration.

    It’s difficult to advise without seeing any/all communication between the parties etc but sometimes people can be persuaded when they are appropriately informed of action that could be brought against them if they have acted in bad faith etc.

    Have they actually contacted you suggesting you cannot use the trademark at this time? They may not in fear of the possible repercussions. If you or the manufacturer do receive any sort of cease & desist demand I would be happy to review and let you know how we can assist in responding and defending etc.

    #1149910
    Keith P
    Member
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    The other party has not contacted me, but I have heard from others that it is taking this matter seriously.

    #1149911
    JacquiPryor
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    Ultimately, I think that if you and the overseas manufacturer conduct yourselves legitimately – and they should start the trademark process – then you’ll be in a position to defend if you have to against allegations, assuming again the other party is not acting in good faith.

    I would certainly suggest that if they do make contact with you that you seek advice. And, as I have noted, the overseas manufacturer should commence their own trademark application here.

    #1149912
    Snakeman
    Participant
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    Salient message to others here ….

    register your IP – before – someone else does it for you!

    All the best

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