PARALLEL IMPORTATION

Parallel Imports LawyerParallel Imports Lawyer | Alex McDonald | Intellectual Property Lawyer Barrister

“Parallel importing” allows retailers, wholesalers and other parties to obtain goods subject to intellectual property rights directly from licensed or authorised overseas sources, rather than dealing with local suppliers, licensees or agents. The intent of parallel importing is to allow for the free flow of a competitive supply of the goods in question.

Historically copyright was used by New Zealand authorised distributors to prevent parallel importation. The law changed in 1998 to effectively remove copyright as a means of stopping parallel imports.

In September 2011 the Government passed an amendment to the Trade Marks Act 2002 implementing a new section 97A which deals with exhaustion of rights conferred by a registered trade mark. The purpose of the amendment is to attempt to remove any uncertainty about whether trade marks can be used to prevent parallel importation. In other words to make it clearer that the Government did not intend that trade marks could be used to stop parallel importation.

The amendments to section 97A are reasonably comprehensive and are aimed in particular at addressing the situation where registered trademarks are transferred to a local subsidiary to try to circumvent the law in New Zealand which allows parallel importation.

The amendments provide that a registered New Zealand trade mark is not infringed by the use of the trade mark in relation to goods that have been put on the market anywhere in the world under that trade mark either:

  • by the owner; or
  • with the owner’s express or implied consent; or
  • by an associated person of the owner.

A person is an associated person of the owner if either that person or the registered owner has effective control of the other’s use of the trade mark. Effective control is widely defined to include significant indirect influence.

PARALLEL IMPORTATION

Parallel Imports Lawyer

Parallel Imports Lawyer | Alex McDonald | Intellectual Property Lawyer Barrister

“Parallel importing” allows retailers, wholesalers and other parties to obtain goods subject to intellectual property rights directly from licensed or authorised overseas sources, rather than dealing with local suppliers, licensees or agents. The intent of parallel importing is to allow for the free flow of a competitive supply of the goods in question.

Historically copyright was used by New Zealand authorised distributors to prevent parallel importation. The law changed in 1998 to effectively remove copyright as a means of stopping parallel imports.

In September 2011 the Government passed an amendment to the Trade Marks Act 2002 implementing a new section 97A which deals with exhaustion of rights conferred by a registered trade mark. The purpose of the amendment is to attempt to remove any uncertainty about whether trade marks can be used to prevent parallel importation. In other words to make it clearer that the Government did not intend that trade marks could be used to stop parallel importation.

The amendments to section 97A are reasonably comprehensive and are aimed in particular at addressing the situation where registered trademarks are transferred to a local subsidiary to try to circumvent the law in New Zealand which allows parallel importation.

The amendments provide that a registered New Zealand trade mark is not infringed by the use of the trade mark in relation to goods that have been put on the market anywhere in the world under that trade mark either:

  • by the owner; or
  • with the owner’s express or implied consent; or
  • by an associated person of the owner.

A person is an associated person of the owner if either that person or the registered owner has effective control of the other’s use of the trade mark. Effective control is widely defined to include significant indirect influence.

Parallel Imports Lawyer | Alex McDonald | Intellectual Property Lawyer Barrister