Paul's Retail Pty Ltd v Sporte Leisure Pty Ltd [2012] FCAFC 51

Paul's Retail Pty Ltd v Sporte Leisure Pty Ltd [2012] FCAFC 51

The appeal was dismissed because Paul's was not permitted to withdraw its deliberate trial concession that s 120(1) was enlivened, and in any event the goods were not genuine goods within the Champagne Heidsieck principle: BTB manufactured them for supply outside India, which was forbidden by the licence. The licence limited BTB's authority to India and prohibited sales of licensed products outside India without approval, so GNC and GWS did not consent to the application of the Greg Norman marks to the goods for the purposes of s 123. The evidentiary record did not support a Jones v Dunkel or Blatch v Archer inference arising from the respondents' failure to call Mr Singh. The website...

Jurisdiction
Australia
Judgment Date
11 April 2012
Procedural Posture
Appeal From the Federal Court of Australia in a Trade Mark Infringement and Misleading or Deceptive Conduct Proceeding / Full Court Appeal From Sporte Leisure Pty Ltd V Paul's International Pty Ltd (no 3) [2010] FCA 1162
Outcome
Appeal dismissed with costs.
Legal Topics
['registered Trade Mark Infringement' 'parallel Importing' 'consent Under S 123 of the Trade Marks Act 1995 (cth)' 'misleading and Deceptive Conduct Under S 52 of the Trade Practices Act 1974 (cth)' 'jones V Dunkel Inference' 'blatch V Archer Principle']
['intellectual Property' 'trade Marks' 'trade Practices' 'evidence'] ['registered Trade Mark Infringement' 'parallel Importing' 'consent Under S 123 of the Trade Marks Act 1995 (cth)' 'misleading and Deceptive Conduct Under S 52 of the Trade Practices Act 1974 (cth)' 'jones V Dunkel Inference' 'blatch V Archer Principle']

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Procedural Posture

Appeal From the Federal Court of Australia in a Trade Mark Infringement and Misleading or Deceptive Conduct Proceeding / Full Court Appeal From Sporte Leisure Pty Ltd V Paul's International Pty Ltd (no 3) [2010] FCA 1162

Legal Issues

  1. 1 ["Whether Paul's should be given leave to withdraw its trial concession and argue that s 120(1) of the Trade Marks Act 1995 (Cth) was not enlivened because it did not use the Greg Norman marks as trade marks." 'Whether the primary judge erred in taking into account territorial restrictions in the licence between GNC and BTB when determining consent under s 123 of the Trade Marks Act 1995 (Cth).' 'Whether the primary judge erred in failing to apply the principles in Blatch v Archer or Jones v Dunkel because the respondents did not call Mr Singh of BTB.' 'Whether listing BTB as an international dealer on the website www.shark.com constituted misleading and deceptive conduct under s 52 of the Trade Practices Act 1974 (Cth).']

Ratio Decidendi

The appeal was dismissed because Paul's was not permitted to withdraw its deliberate trial concession that s 120(1) was enlivened, and in any event the goods were not genuine goods within the Champagne Heidsieck principle: BTB manufactured them for supply outside India, which was forbidden by the licence. The licence limited BTB's authority to India and prohibited sales of licensed products outside India without approval, so GNC and GWS did not consent to the application of the Greg Norman marks to the goods for the purposes of s 123. The evidentiary record did not support a Jones v Dunkel or Blatch v Archer inference arising from the respondents' failure to call Mr Singh. The website...

Court Disposition

Appeal dismissed with costs.

Orders

  • ['The appeal be dismissed.' "The appellant is to pay the respondents' costs."]