Legal Eye
Question: Is it legal for a shop owner or designer to buy clothing from a wholesaler and retag it with their own label to sell? I am about to open my own store in inner Sydney and several wholesale stores have told me this is okay. TA, Sydney.
Answer: The removal of labels from garments may be an infringement of the Trade Marks Act 1995 (Cth). However, whether this conduct is infringing will depend on the facts of each case. The Trade Marks Act 1995 (Cth) provides that it is an offence to alter, partly remove, erase or obliterate or remove a trade mark which has been applied to goods which are to be dealt with in the course of trade.
It must be shown that the alleged offender knew that the trade mark was registered or was reckless to the fact of whether or not the trade mark was registered.
It is also an offence under the Trade Marks Act 1995 (Cth) to sell these goods, expose these goods for sale, have these goods in your possession or import these goods if the person knows or was reckless to the fact that a registered trade mark is falsely applied or removed from the goods.
If any of these infringements are proven then the courts are able to impose on individuals serious penalties. A person found guilty of these offences can be punished by a fine of up to $55,000, a jail term of up to two years, or by both a fine and term of imprisonment.
It is important to note that these infringement sections only relate to registered trade marks. Therefore, it is not an offence to alter, partly remove, erase or obliterate or remove a trade mark which has been applied to goods if the trade mark is not a registered trade mark in Australia.
If the trade mark in question is not registered in Australia then the replacement of branding on garments will not be an offence under the Trade Marks Act 1995 (Cth).
The best away around the problem of rebranding goods which already have a registered trade mark is to seek clear and unequivocal consent from the trade mark owner (or authorised user of the trade mark in question) to remove the registered trade mark and replace it with your own brand. You may also be able to have your supplier brand the garments at the time of ordering with your trade mark.
It is important to obtain this consent or authorisation in writing should a dispute arise down the track. Similarly, if you are a clothing label wholesaling product it is important that you register the trade marks which you affix to your goods so that action can be taken if your registered trade marks are removed.
Middletons Lawyers’ senior associate, Jonathan Feder.
Test of time
Fitouts for accessories-only stores can be a challenge. tilkah goes back in time, Assia benmedjdoub discovers.
The paint has barely dried on the $1.2 billion Westfield Sydney City development, but inside the Tilkah accessory boutique on level four there are already signs of wear.
Its walls are covered in specially aged wallpaper from Florence Broadhurst, rustic wooden boards have been fitted into its floors, and century old perfume bottles have been sourced from New York as design features.
Scenic artists Gary Grimes and Matt Jordin, who between them have worked on feature film sets including Moulin Rouge and The Matrix, were commissioned to create the ‘antique jewel box’ setting.
“They were involved in the process of ageing and distressing the walls of the store, as well as ageing the beautiful Florence Broadhurst wallpaper prior to all the fixtures and fittings being installed,” Tilkah founder Natalie Sheezel says.
The theme is extended through the use of vintage arched mirror doors, an aged mirror above a centre feature unit and brass t-bars throughout. More modern features include laser leaf pendants with LED strip lighting.
Opened late last month, it marks the brand’s first retail venture outside of its hometown of Melbourne, where it operates a network of five stores.
Tilkah’s Melbourne Central, Chadstone, South Yarra, Preston and High Point sites also feature the luxe rustic theme, created to offset its collections of soft leather goods and sparkling jewellery.