Paul's Retail Pty Ltd v Lonsdale Australia Ltd

Paul's Retail Pty Ltd (the appellants) appealed against a decision of the Federal Court of Australia, which found that the appellants had infringed the trade marks of Lonsdale Australia Ltd (the respondent) by importing and selling goods manufactured in China by a German licensee, Punch. The appellants argued that the respondent's consent to the use of the trade marks by Punch in Germany meant that the respondent had also consented to their use in Australia. The appellants further contended that the importation, distribution, and sale of the goods did not constitute a "use" of the trade marks, and that they had a defence under section 123 of the Trade Marks Act 1995 (Cth). The respondent argued that the appellants had infringed its exclusive rights as the registered owner of the trade marks by using them without consent.

The Court considered whether the respondent's consent to the use of the trade marks by Punch in Germany manifested consent to their use in Australia, and whether the importation, distribution, and sale of the goods constituted a "use" of the trade marks. The Court found that the respondent's consent to Punch's use of the trade marks in Germany was limited to the territory specified in the licence agreement and did not extend to their use in Australia. The Court also found that the importation, distribution, and sale of the goods constituted a "use" of the trade marks.

The Court rejected the appellants' argument that the respondent's consent to Punch's use of the trade marks in Germany manifested consent to their use in Australia. The Court held that the respondent's consent was limited to the territory specified in the licence agreement and did not extend to their use in Australia. The Court further held that the sales agreement between Punch and Unicell, which was governed by Swiss law, provided that title to the goods passed upon payment within a reasonable time after receipt of the goods in China. Therefore, the use of the trade marks for the purposes of the sale by Punch to Unicell could not be seen to be within the limited consent given by the Punch licence.

The Court also rejected the appellants' argument that the importation, distribution, and sale of the goods did not constitute a "use" of the trade marks. The Court held that the relevant issue was whether the respondent's exclusive rights given to it by registration of the Lonsdale Australia Trade Marks had been infringed, and not whether the Paul's Goods bore one or more of the Punch Marks.

The Court dismissed the appeal and ordered that the appellants pay the respondent's costs of the application and appeal.