Paul's Retail Pty Ltd v Lonsdale Australia Limited

In the matter of Paul’s Retail Pty Ltd v Lonsdale Australia Limited, the applicant sought leave to appeal a decision of the Federal Court of Australia. The primary dispute involved allegations of trademark infringement concerning clothing and footwear bearing Lonsdale trade marks. Lonsdale Australia Limited, the respondent, did not oppose the granting of leave to appeal or the expediting of the appeal, provided that certain security measures were implemented and the availability of its counsel was considered. The respondent’s position was based on written submissions dated 2 July 2012.

The legal issues before the court included whether the Lonsdale branded goods infringed on the respondent's registered trademarks and the circumstances under which the applicant, Paul’s Retail Pty Ltd, claimed to be using the trademarks legitimately. The applicant argued that the goods were genuine and their sale did not constitute trademark use within the meaning of the Trade Marks Act 1995 (Cth). Alternatively, the applicant raised a defence under section 123(1) of the Act, contending that the goods were manufactured under specific circumstances that justified their use of the trademarks.

The court granted leave for the appeal to proceed and ordered that the matter be listed in the August 2012 Full Court sittings if possible, or expedited to the earliest available date thereafter. The parties were directed to comply with Practice Note APP 2 (1 August 2011) immediately. Costs were reserved for a later determination.