A Requiem for Champagne Heidsieck: Trade Mark Use and Parallel Importation

(2016) 26 Australian Intellectual Property Journal 110-130

UNSW Law Research Paper No. 2016-40

30 Pages Posted: 3 Jul 2016

See all articles by Robert Burrell

Robert Burrell

University of Melbourne - Law School

Michael Handler

University of New South Wales (UNSW) - Faculty of Law

Date Written: June 17, 2016

Abstract

The “Champagne Heidsieck rule”, under which the importation and sale of legitimate branded goods has been held not to involve use as a trade mark, has historically provided an important mechanism to facilitate the parallel importation of trade marked products in Australia. However, following a number of recent Federal Court decisions, the rule has been written out of Australian law. This means that parallel importers and sellers of second-hand goods need to rely on the problematic defence contained in s 123 of the Trade Marks Act to avoid liability. This article traces the history and reception of the Champagne Heidsieck rule in Australia, and argues that the courts have taken a wrong turn by doing away with the rule, in part based on a misunderstanding of the history of the role of confusion in registered trade mark law. After discussing the numerous problems with the current s 123 defence, we consider how the Australian law on parallel importation and sale of second-hand goods could be improved, concluding that the best option is to resurrect the Champagne Heidsieck rule.

Keywords: Champagne Heidsieck Rule, Trade Marks Act, sale of second hand goods, trade mark law

Suggested Citation

Burrell, Robert and Handler, Michael, A Requiem for Champagne Heidsieck: Trade Mark Use and Parallel Importation (June 17, 2016). (2016) 26 Australian Intellectual Property Journal 110-130; UNSW Law Research Paper No. 2016-40. Available at SSRN: https://ssrn.com/abstract=2803044

Robert Burrell

University of Melbourne - Law School ( email )

University Square
185 Pelham Street, Carlton
Victoria, Victoria 3010
Australia

Michael Handler (Contact Author)

University of New South Wales (UNSW) - Faculty of Law ( email )

Kensington, New South Wales 2052
Australia
+61 2 9385 2874 (Phone)

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