Sporte Leisure Pty Ltd v Paul’s International Pty Ltd (No 3) [2010] FCA 1162

Sporte Leisure Pty Ltd v Paul’s International Pty Ltd (No 3) [2010] FCA 1162

The second respondent infringed the second applicant's registered trade marks by importing and selling garments to which the marks had been applied by a licensee outside the terms of the licence and without the owner's consent. The s 123 Trade Marks Act defence did not apply because the licence permitted marking only for products sold in India. Only the second respondent was liable; other respondents were not jointly liable as no concerted acts were proved. Mr Dwyer was not liable as a joint tortfeasor, as he acted in good faith and had an honest belief in the genuineness of the goods. The second respondent also contravened ss 52 and 53(e) Trade Practices Act by making false or misleading...

Parties
First Applicant/first Cross Respondent: Sporte Leisure Pty Ltd (ACN 008 608 919); Second Applicant/second Cross Respondent: Great White Shark Enterprises LLC; Third Applicant/third Cross Respondent: Lifestyle Brands Holdings LLC; First Respondent: Paul's International Pty Ltd (ACN 128 263 561); Second Respondent/first Cross Claimant: Paul's Retail Pty Ltd (Subject to Deed of Company Arrangement) (ACN 114 419 242); Third Respondent: PW Trading Pty Ltd (ACN 103 736 027) (in its own right and ATF Paul's Warehouse Discretionary Trust); Fourth Respondent: PW Retail Pty Ltd (ACN 128 572 574) (in its own right and ATF Pauls' Warehouse Discretionary Trust); Fifth Respondent/second Cross Claimant: Paul Dwyer
Jurisdiction
Australia
Judgment Date
29 October 2010
Procedural Posture
Intellectual Property and Competition/trade Practices (civil Proceeding) / Post Trial Judgment Determining Liability and Orders to Be Settled
Outcome
Second respondent liable for trade mark infringement and contraventions of ss 52 and 53(e) Trade Practices Act; orders for declarations and delivery up; no injunction for trade mark infringement; other respondents and Mr Dwyer not liable; cross-claim dismissed.
Legal Topics
Trade Mark Infringement, Defences to Trade Mark Infringement, Joint Tortfeasorship, Misleading and Deceptive Conduct, False or Misleading Representations as to Price, Director's Liability for Torts, Cross Claims Under Trade Practices Act
Intellectual Property Trade Practices/competition Law Trade Mark Infringement Defences to Trade Mark Infringement Joint Tortfeasorship Misleading and Deceptive Conduct False or Misleading Representations as to Price Director's Liability for Torts +1 more

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Parties

Sporte Leisure Pty Ltd (ACN 008 608 919)

First Applicant/first Cross Respondent

Great White Shark Enterprises LLC

Second Applicant/second Cross Respondent

Lifestyle Brands Holdings LLC

Third Applicant/third Cross Respondent

Paul's International Pty Ltd (ACN 128 263 561)

First Respondent

Paul's Retail Pty Ltd (Subject to Deed of Company Arrangement) (ACN 114 419 242)

Second Respondent/first Cross Claimant

PW Trading Pty Ltd (ACN 103 736 027) (in its own right and ATF Paul's Warehouse Discretionary Trust)

Third Respondent

PW Retail Pty Ltd (ACN 128 572 574) (in its own right and ATF Pauls' Warehouse Discretionary Trust)

Fourth Respondent

Paul Dwyer

Fifth Respondent/second Cross Claimant

Procedural Posture

Intellectual Property and Competition/trade Practices (civil Proceeding) / Post Trial Judgment Determining Liability and Orders to Be Settled

Legal Issues

  1. 1 Whether respondents infringed registered trade marks by importation and sale of goods manufactured and marked by licensee for India
  2. 2 Whether trade marks were applied to the goods with the consent of the trade mark owner (s 123 Trade Marks Act defence)
  3. 3 Whether associated companies and director are jointly liable as tortfeasors

Ratio Decidendi

The second respondent infringed the second applicant's registered trade marks by importing and selling garments to which the marks had been applied by a licensee outside the terms of the licence and without the owner's consent. The s 123 Trade Marks Act defence did not apply because the licence permitted marking only for products sold in India. Only the second respondent was liable; other respondents were not jointly liable as no concerted acts were proved. Mr Dwyer was not liable as a joint tortfeasor, as he acted in good faith and had an honest belief in the genuineness of the goods. The second respondent also contravened ss 52 and 53(e) Trade Practices Act by making false or misleading...

Court Disposition

Second respondent liable for trade mark infringement and contraventions of ss 52 and 53(e) Trade Practices Act; orders for declarations and delivery up; no injunction for trade mark infringement; other respondents and Mr Dwyer not liable; cross-claim dismissed.

Orders

  • Applicants to provide to respondents a proposed set of declarations and orders (including costs) within 7 days.
  • Proceeding stood over to a date to be fixed for further argument to dispose of the matter on a final basis.