Brother wins trade mark case

Brother Industries Ltd in Nagoya, Japan, has announced that Brother Industries Ltd and Brother International (Aust.) Pty Ltd. have been successful in a Federal Court case against Dynamic Supplies Pty Ltd, one of Australia’s largest distributors of computer consumables.

In 2004, Brother notified Dynamic Supplies that it was infringing Brother’s trade marks by selling OEM printer drum units (which have different a specification to that of Brother branded printer drum units) as Brother branded printer drum units.

Dynamic Supplies rejected Brother’s allegations, arguing that the OEM units had entered the supply chain of Brother’s subsidiary in a country other than Australia, an allegation that was later dismissed.

The Federal Court found that Dynamic Supplies imported and sold unbranded, OEM printer drum units in counterfeit Brother packaging. Those printer drum units were sold by Dynamic Supplies as Brother branded DR200 printer drum units.

The Court made two significant rulings in this case.  

1. A reseller is not permitted to apply a manufacturer’s trade mark to OEM goods that the manufacturer did not intend to be sold under its trade mark. 
2. If OEM goods pass through the supply chain of a subsidiary of a trade mark owner as branded goods but without the authorisation of the trade mark owner himself, it does not follow that the trade mark owner will be deemed to have authorised the use of its trade mark on those goods by virtue of the conduct of its subsidiary. For the use of the trade mark to be authorised, it must be applied with the direct authority of the trade mark owner itself.

Recycler has contacted Dynamic Supplies for comment and is awaiting their reply.