Not parallel imports 

Brother makes DR-200 drum units for its printers, which it brands with its Brother trade mark.  

It also makes pretty much the same drum unit which it supplies to Company X, as OEM equipment - which seems to mean that Company X includes the drums in its own printer product.  These OEM products do not have the Brother trade mark embossed on them.

Dynamic Supplies imported into Australia and sold some drum units, which were apparently the OEM units,  in packaging which had the Brother trade mark on it.  The units inside the packaging did not have the Brother trade mark embossed on them.

At the time of the sales, Brother packaging for DR-200 units was in white cardboard.  Previously, it had been brown cardboard.  The packaging of the products imported by Dynamic Supplies used brown cardboard.

Tamberlin J has found that Dynamic Supplies infringed Brother's trade marks....

Dynamic Supplies argued that it had not used Brother as a trade mark as the imported units were in fact products made by Brother.  Tamberlin J rejected this argument as his Honour found that the packaging was counterfeit and Brother had not applied its trade mark to, or in relation to, the imported products.

50 When a manufacturer takes steps to dissociate itself from a product by removing any trade mark and selling it as an OEM product, the manufacturer cannot be said to have ‘used’ a false copy of its trade mark which, without permission, is applied to its product by some disassociated entity in the distribution chain. In this case, Brother has disassociated itself from the OEM products which it sold to Company X. The express non-use of Brother’s name, reputation and trade mark was clearly a term of supply of the OEM product. The fact that a counterfeiter, after supply, repackaged the OEM products in false Brother packaging cannot support the submission that Brother was the ‘user’ of the mark.

Secondly, his Honour rejected the argument that none of Brother's trade mark registrations covered printer drum units.  Printer drum units were expressly mentioned in the specification for one registration, but its priority date was after the allegedly infringing conduct occured.  The registrations which were in effect when the conduct occurred did extend to "apparatus for the transmission or reproduction of images: and "parts", "accessories" or "attachments".  

tamberlin J found that the fact that the drum units were consumables just meant that they were parts or accessories with a limited life span, it did not take them wholly outside the scope of the registrations.

Further, his Honour found that the use of the Brother trade mark on the counterfeit packaging also infringed Brother's registration in class 16, which covered "all other goods in class 16".

Tamberlin J also rejected Dynamic Supplies attempt to rely on the s 123(1) defence.

Dynamic Supplies bought the goods from Discover Group in the USA.  Discover Group did buy goods from Brother America, a subsidiary of Brother.  However, Tamberlin J found that Dynamic Supplies' evidence did not establish that the specific products it had imported and sold had in fact been sourced from Brother America.

His Honour went on to hold that the defence would not be made out if the goods had been sold by  Brother America as the consent required under s 123 was the consent of Brother Japan as the owner of the trade marks in Australia.  Apart from the factual controversy, his Honour's rejection of Revlon v Cripps and Lee raises an interesting point given the similarity of the terms of the respective defences.

Brother Industries, Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490.