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

FEDERAL COURT OF AUSTRALIA

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

Parties: SPORTE LEISURE PTY LTD (ACN 008 608 919), GREAT WHITE SHARK ENTERPRISES LLC and LIFESTYLE BRANDS HOLDINGS LLC v PAUL'S INTERNATIONAL PTY LTD (ACN 128 263 561), PAUL'S RETAIL PTY LTD (SUBJECT TO DEED OF COMPANY ARRANGEMENT) (ACN 114 419 242), PW TRADING PTY LTD (ACN 103 736 027) (IN ITS OWN RIGHT AND ATF PAUL'S WAREHOUSE DISCRETIONARY TRUST), PW RETAIL PTY LTD (ACN 128 572 574) (IN ITS OWN RIGHT AND ATF PAULS' WAREHOUSE DISCRETIONARY TRUST) and PAUL DWYER

File number: NSD 335 of 2009

Judge: NICHOLAS J

Date of judgment: 29 October 2010

Catchwords: INTELLECTUAL PROPERTY – registered trade marks – infringement – respondents alleged to have infringed second applicant's registered trade marks by importing and offering for sale in Australia garments to which the marks had been applied by second applicant's licensee for territory of India – respondents raised defence under s 123 of the Trade Marks Act – whether trade marks applied to the garments by licensee with the consent of the trade mark owner – whether licensee permitted to apply marks to garments manufactured for sale by it in Pakistan – licensee only permitted to apply the marks to garments sold by it in India – significance of finding that garments were made by licensee for sale outside India – onus of proof – second applicant also alleged garments did not meet approval and manufacturing standards imposed pursuant to licence agreement – evaluation of second applicant's evidence concerning that matter Held: Importation and sale of garments by second respondent infringed second applicant's marks – marks not applied with the consent of their owner – declarations and order for delivery up in appropriate form to be made – injunctions refused INTELLECTUAL PROPERTY – joint tortfeasorship – whether all of the corporate respondents were jointly liable for trade mark infringement on basis that they were engaged in a common design – whether fifth respondent who was sole director of second respondent was also liable as a joint tortfeasor – discussion of principles relevant to such liability Held: Relevant acts performed by the second respondent – infringement not the result of concerted acts of other corporate respondents – other corporate respondents not liable as joint tortfeasors – fifth respondent acted in honest belief that second respondent's acts of importation and sale directed or procured by him did not infringe trade marks – fifth respondent not liable as joint tortfeasor TRADE PRACTICES – misleading and deceptive conduct – false and misleading representations with respect to price – second respondent circulated brochure advertising clothing – brochure referred to sale price, recommended retail price (RRP) and saved amount for each of 6 styles – applicants alleged that RRP overstated for 5 of the 6 styles and that there was no RRP for the other style – whether representations false and misleading – whether contraventions of ss 52 and 53(e) of the Trade Practices Act established Held: Contraventions of ss 52 and 53(e) of Trade Practices Act established – declarations and injunctions in appropriate form to be made TRADE PRACTICES – misleading and deceptive conduct – cross-claim by second and fifth respondents – website associated with applicants included content which was alleged to be misleading and deceptive because it listed the licensee for the territory of India as an "international dealer" and implicitly made certain representations which induced second respondent to import and sell clothing in the belief that it was entitled to do so – whether representations made Held: Representations not made – cross-claim dismissed