Weber did not respond to SmartCompany‘s request for comment prior to publication. However, the company’s website currently states: “Recently purchased a Weber Kettle with missing parts? Please contact us”.
Chris McLeod, partner at law firm Clayton Utz, told SmartCompany the legal issues at stake rest on how Bunnings is selling the products.
“This seems to be a situation where the relevant Weber trademarks have been applied overseas on the parallel imported products with the consent of the Australian trade mark owner. Rather than attempting to rely on any registered trademarks in Australia Weber is instead taking action on the way Bunnings is selling the product, saying it is misleading,” says McLeod.
He says even if a business can parallel import a product they can’t sell it in a way that misleads Australian consumers.
“It seems Bunnings is selling a BBQ with US features that are different to the normal Australian features for that BBQ. Weber is arguing that Weber consumers would be expecting to get all the Australian features they would get if they buy the authorised product,” McLeod says.
Even if Bunnings is found to have engaged in misleading conduct for any of the claims, McLeod says the retailer can probably continue selling the Weber One-Touch Kettle BBQs by making it clearer that although it is a genuine Weber BBQ it has different features and guarantees.
Authorised distributors and brands are increasingly turning to litigation to fight against parallel importation of products and counterfeit products, with MAC Cosmetics launching proceedings against Target this week and Greg Norman taking Paul’s Warehouse to court earlier this year.
“It seems, at least recently, there has been a bit of a fight back going on, whether it’s saying the defence in the Trademarks Act does not apply or by relying on the prohibition of misleading conduct,” says McLeod.
“Recent cases show that it can be difficult for parallel importers to rely on the defence in the Trademarks Act, as the onus is on them to prove the trademark was applied overseas with the consent of the Australian trademark owner.
“No doubt this case will be watched with interest by authorised distributors in Australia.”
