12 April 2012

Great White Shark Protects its Brand

Federal Court:
Sporte Leisure Pty Ltd v Paul’s International Pty Ltd (No 3) [2010] FCA 1162


Full Federal Court:
Paul’s Retail Pty Ltd v Sporte Leisure Pty Ltd [2012] FCAFC 51


  • S123 of the Trade Marks Act sets out that a person does not infringe a trade mark if the trade mark has been applied by or with the consent of the registered owner of the trade mark.
  • Infringement takes place when the alleged infringing use is use as a trade mark. 
  • It was doubted that an infringer could claim that "use as a trade mark" had not taken place because the trade mark had been applied with the consent of the owner, even though distribution resulted in breach of the license agreement because of non-compliance with territorial provisions. A final opinion was not expressed.
  • In any event, application in terms of a license agreement so breached was found to be without the consent of the registered owner.

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