Quiksilver PTY Ltd & Anor v Charles Robertson (Developments) Ltd (t/a "Trago Mills")

Quiksilver PTY Ltd & Anor v Charles Robertson (Developments) Ltd (t/a "Trago Mills")

The defendant failed to prove that Quiksilver, as proprietor of the trade marks, gave express or implied consent to the goods being placed on the market in the EEA. Palimar did not consent, and any alleged consent by Palimar would not bind Quiksilver. The facts did not unequivocally demonstrate renunciation of rights by Quiksilver. Na Pali, as exclusive licensee, had standing to sue under the licence agreement and section 31(1) of the 1994 Act.

Parties
Claimant: Quiksilver Pty Limited; Claimant: Na Pali SAS; Defendant: Charles Robertson (Developments) Limited (Trading as “Trago Mills”)
Jurisdiction
England and Wales
Judgment Date
26 July 2004
Procedural Posture
Intellectual Property Trade Mark Infringement / Trial on Liability Only; Quantum of Damages Reserved for Later Inquiry
Outcome
Liability for trade mark infringement established against the defendant; damages to be assessed.
Legal Topics
Trade Mark Infringement, Consent Under Trade Marks Act 1994, Standing of Exclusive Licensee
Intellectual Property Law Trade Mark Infringement Consent Under Trade Marks Act 1994 Standing of Exclusive Licensee

Case Brief

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Parties

Quiksilver Pty Limited

Claimant

Na Pali SAS

Claimant

Charles Robertson (Developments) Limited (Trading as “Trago Mills”)

Defendant

Procedural Posture

Intellectual Property Trade Mark Infringement / Trial on Liability Only; Quantum of Damages Reserved for Later Inquiry

Legal Issues

  1. 1 Whether Quiksilver consented to the goods being put on the market in the EEA within the meaning of section 12(1) of the Trade Marks Act 1994
  2. 2 Whether Na Pali as exclusive licensee has standing to bring the claim

Ratio Decidendi

The defendant failed to prove that Quiksilver, as proprietor of the trade marks, gave express or implied consent to the goods being placed on the market in the EEA. Palimar did not consent, and any alleged consent by Palimar would not bind Quiksilver. The facts did not unequivocally demonstrate renunciation of rights by Quiksilver. Na Pali, as exclusive licensee, had standing to sue under the licence agreement and section 31(1) of the 1994 Act.

Court Disposition

Liability for trade mark infringement established against the defendant; damages to be assessed.

Orders

  • Both claimants entitled to damages to be assessed for infringement by the defendant of the trade marks by reason of the marketing and sale of Quiksilver products at Trago Mills.