Counterfeit Oakley sunglasses seized at the Australian border

The Australian Customs Service has seized 60 pairs of counterfeit Oakley® sunglasses and accessories.

Seizures of the sunnies were made on 30 December 2009 and 6 January 2010, pursuant to the Trade Marks Act 1995 which makes provision for the seizure of goods which bear registered trade marks applied without the trade mark owner’s authorisation.

A trade mark owner must lodge a Notice of Objection with Customs, identifying its registered trade marks to trigger the seizure of allegedly counterfeit goods at the border. The owner must then institute court proceedings within a set period, or the goods will be returned to their owner.

Oakley sought interlocutory relief against the owner of the goods in Oakley, Inc v Elkofairi [2010] FCA 188. However, the parties reached an agreement on the first day of the proceedings in the Federal Court resulting in a consent order permanently restraining Elkofairi from importing and selling goods bearing Oakley’s trade marks or any marks substantially identical with or deceptively to, and from assisting any other person to do so.

Elkofairi was also required to forfeit the goods to the Commonwealth for disposal. It was ordered to deliver up to Oakley’s lawyers any goods or documents in his possession, custody or control which bore Oakley’s trade marks or any name, word, mark, sign or device substantially identical or deceptive similar thereto, applied without Oakley’s authority.

This case demonstrates the value of registered trade mark owners having an effective strategy to combat counterfeiters. Such a strategy should include the lodgement of a Notice of Objection with Customs, identifying a company’s registered trade marks and copyright material. By way of example, Oakley also relies on consumers to report the present of counterfeit goods in the marketplace and on the Internet.  Consumers can dob in a counterfeiter by reporting sightings of allegedly fake products through the company’s website.