Sporting goods retailer Paul’s Warehouse has been back in court with the Federal Court finding the retailer’s importation of Lonsdale branded goods was a trademark infringement.
Paul’s was hauled before the Federal Court earlier this year for importing Greg Norman branded goods which infringed Norman’s trademark. Last year, the sporting goods retailer was found by the court to have been selling counterfeit goods bearing the Quiksilver and Billabong labels.
The latest case involved a dispute stemming from a complex series of transactions that saw Paul’s bring the Lonsdale branded goods into Australia without dealing with the exclusive Australian licence holder, VAG Group.
The goods were shipped through Sri Lanka and were stopped at customs by an interim injunction obtained by Lonsdale.
Justice Gordon found Paul’s bore the onus of establishing consent by Lonsdale to the use of the Lonsdale trademark in Australia and had not established that consent.
“It is common ground that the marks affixed to the Paul’s goods were substantially identical with and/or deceptively similar to the Lonsdale Australia trade marks,” she found.
Celia Davies, partner at law firm Freehills, says the Federal Court decision puts the onus firmly on defendants to show relevant consent.
“I think it is a really good decision in the sense that companies in Australia have really struggled to stop parallel importation, and this case and the previous one really set some boundaries to say just because they came from a genuine source does not mean they can come into the country,” says Davies.
“It gives trademark owners some hope that there are avenues to stop parallel importers using the trademark system, we are now getting a line of authority that sets out the circumstances where trademark owners can stop parallel imports.”
But Davies says although Paul’s Warehouse is a “repeat offender” there is limited recourse available under the law.
“Every circumstance has been different, it is not a blatant counterfeit case so can you shut Paul’s Warehouse down? It is going to be difficult because the issues are quite complicated,” she says.
“You are dealing with tricky legal and factual issues but does Paul’s Warehouse have the resources to keep fighting this in the Federal Court?
“At some point it is not going to be a viable business proposition for them.”
Paul’s Warehouse was contacted by SmartCompany but did not respond prior to publication.