Obiter, the court rejected Paul's Retail's submission that there is an onus on GWSE to show that the consent defence under section 123 of the Act does not apply.
Whether the director held an honest belief that the acts which he directed or procured were not unlawful is also a significant (and, in this case, decisive) consideration. The extent of the director's personal involvement and his state of mind is important. In considering the authorities and concluding that the sole director of Paul's Retail, Paul Dwyer, was not liable for trade mark infringement as a joint tortfeasor, the Court considered that if a director is to be liable as a joint tortfeasor, something more than a finding that the director caused or directed his company to perform infringing acts is required. It is not clear if the same conclusion would apply if the licensee was unaware of the destination of the goods or if the order was met from an existing stockpile. However, this a principle may be restricted to the specific facts of this case, because the evidence demonstrated that the licensee only made the goods after receiving a purchase order for them which was to be delivered outside the territory. According to the judge, when the registered owner of a trade mark consents to another person applying that mark to goods on condition that those goods must not be supplied outside a designated territory, the trade mark owner is not usually regarded as having consented to the application of the mark to goods which the other person knows, when the mark is applied, are to be supplied outside the territory. There are three key points to appreciate here:ġ. The judge rejected Paul's Retail defence under section 123(1) of the Trade Marks Act 1995 (consent of the trade mark owner) because the licensee of the trade marks was not allowed to sell the goods it made outside the Union of India without consent and knew in advance that the goods made for Paul's Retail were to be sold outside India.
Readers will instantly sense the problem here - parallel importation. In this dispute Nicholas J, in the Federal Court of Australia, held that Paul's Retail infringed some 'Greg Norman' registered trade marks held by Great White Shark Enterprises (GWSE) - even though the allegedly infringing merchandise was made by and bought from an authorised licensee. It's Sporte Leisure Pty Ltd v Paul's International Pty Ltd (No 3) FCA 1162, of 20 October 2010. įrom the IPKat's Australian friends at Allens Arthur Robinson comes news of a recent decision that might appeal to his trade mark readers.
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