Paul's Retail Pty Ltd v Sporte Leisure Pty Ltd

Paul’s Retail Pty Ltd brought an action against Sporte Leisure Pty Ltd for the infringement of trade marks and misleading or deceptive conduct. The case was heard and determined by the Full Bench of the Federal Court of Australia, with the appeal being dismissed. The primary issue before the court was whether the respondent had infringed the appellant’s trade marks by importing and offering for sale garments to which the marks had been applied by the respondent's licensee for the territory of India. The respondent argued that the trade marks had been applied with the consent of the trade mark owner and that the licensee was permitted to apply the marks to garments manufactured for sale in Pakistan. The court was also required to decide whether the respondent engaged in misleading and deceptive conduct by listing the Indian licensee as an “international dealer” on its website.

The court found that the respondent had infringed the appellant’s trade marks by importing and offering for sale the Indian-manufactured garments to which the marks had been applied. The court held that the respondent’s argument that the trade marks had been applied with the consent of the trade mark owner was not supported by the evidence. The court also found that the respondent engaged in misleading and deceptive conduct by listing the Indian licensee as an “international dealer” on its website, as it was not an authorised dealer in Australia. The court rejected the respondent's argument that the trial judge erred in not drawing a Jones v Dunkel inference or in finding that a witness was in the respondent's "camp". The Full Bench held that there was no error in the trial judge's findings or conclusions.

The appeal was dismissed with costs. The appellant was ordered to pay the respondents' costs. The entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.