The Australian Federal Court on 29th October 2010 came out with its latest decision which speaks about the scope of a license agreement, while deciding the case of Sporte Leisure Pty Ltd v Paul’s International Pty Ltd ((No 3) [2010] FCA 1162). In the case, the appellant had brought a claim against the respondents for the infringement of the "Greg Norman" word mark and a shark image mark.
Greg Norman Collection Inc. had granted license to an Indian company to sell Greg Norman apparel in India. Violating the terms of the license agreement, the Indian Company sold it to a Pakistan company who inturn sold it to a private retailer in Australia. Greg Norman claimed infringement on the basis that the goods were sold outside the permitted territory without its consent. The private retailer took defence under section 123 of the Australian Trademarks Act.
Section 123 of the Australian Trade Marks Act, 1995 allows a person to use the registered Trade Mark if the trademark is being used for similar kinds of goods with the consent of the owner of the mark. This is a common defence used by the parallel importers in an infringement suit.
The major issues raised by the court were:
· Whether the Marks were applied to the garments with the consent of Great White; and
· Whether shipping the goods outside India was a violation of the License.
Hearing both the sides, the court held that there was no consent by Great White to apply the Marks to the garments which were exported outside of India. Nicholas J, the Hon’ble judge deciding this case, stated that “where an owner consents to another person applying the registered mark to goods on the condition that the goods must not be supplied outside a particular territory, then the registered owner would not usually be regarded as having consented to the application of the mark to goods which are intended to be supplied by the person outside of the designated territory.”
Image from www.shark.com
Authored by Ms. Sharada Kalamadi
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