Lonsdale Australia Limited v Paul's Retail Pty Ltd [2012] FCA 584

Lonsdale Australia Limited v Paul's Retail Pty Ltd [2012] FCA 584

Each respondent imported, promoted, distributed, offered for sale or sold goods bearing one or more of the Lonsdale Australia Trade Marks, or marks substantially identical with or deceptively similar to them, in Australia without the consent of Lonsdale Australia, the registered owner. The defence under s 123 of the Trade Marks Act 1995 (Cth) was not made out, as there was no evidence that Lonsdale Australia consented to the application of its trade marks to the goods. Therefore, both respondents infringed Lonsdale Australia's registered trade marks.

Parties
Applicant: Lonsdale Australia Limited; First Respondent: Paul's Retail Pty Ltd (ACN 114 419 242); Second Respondent: PW Inventory Pty Ltd (ACN 128 572 341)
Jurisdiction
Australia
Judgment Date
05 June 2012
Procedural Posture
Trade Mark Infringement Proceeding / Reasons for Judgment and Orders Following Trial
Outcome
Application for infringement upheld; respondents found to have infringed registered trade marks.
Legal Topics
Registered Trade Marks, Trade Mark Infringement, Parallel Importation, Consent of Registered Owner, Use of Trade Marks
Intellectual Property Trade Marks Registered Trade Marks Trade Mark Infringement Parallel Importation Consent of Registered Owner Use of Trade Marks

Case Brief

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Parties

Lonsdale Australia Limited

Applicant

Paul's Retail Pty Ltd (ACN 114 419 242)

First Respondent

PW Inventory Pty Ltd (ACN 128 572 341)

Second Respondent

Procedural Posture

Trade Mark Infringement Proceeding / Reasons for Judgment and Orders Following Trial

Legal Issues

  1. 1 Whether importation, promotion, distribution, offering for sale or selling goods bearing registered trade marks constituted infringement under s 120 of the Trade Marks Act 1995 (Cth)
  2. 2 Whether goods were 'genuine goods' and whether respondents' conduct was protected by the Champagne Heidsieck principle
  3. 3 Whether goods were imported and sold with consent of the registered owner under s 123 of the Trade Marks Act 1995 (Cth)

Ratio Decidendi

Each respondent imported, promoted, distributed, offered for sale or sold goods bearing one or more of the Lonsdale Australia Trade Marks, or marks substantially identical with or deceptively similar to them, in Australia without the consent of Lonsdale Australia, the registered owner. The defence under s 123 of the Trade Marks Act 1995 (Cth) was not made out, as there was no evidence that Lonsdale Australia consented to the application of its trade marks to the goods. Therefore, both respondents infringed Lonsdale Australia's registered trade marks.

Court Disposition

Application for infringement upheld; respondents found to have infringed registered trade marks.

Orders

  • By 12:00pm on 8 June 2012, parties are directed to bring in final orders to give effect to these reasons for decision and for the future conduct of the trial.