FEDERAL COURT OF AUSTRALIA

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

THE COURT ORDERS THAT:

1.    The applicants provide to the respondents within 7 days a proposed set of declarations and orders (including in relation to costs) which they contend should be made in light of these reasons for judgment.

2.    The proceeding is to stand over to a date to be fixed by arrangement with the Associate to Nicholas J for any further argument that may need to occur (including in relation to costs) to dispose of the proceeding on a final basis.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using Federal Law Search on the Court’s website.

REASONS FOR JUDGMENT

Background

1    This is a proceeding brought by the applicants against the respondents for trade mark infringement under s 120(1) of the Trade Marks Act 1995 (Cth) and for contravention of s 52(1) and s 53 of the Trade Practices Act 1974 (Cth). The trade practices case concerns what are alleged to be false or misleading representations made in relation to price.

2    The second applicant is and was, at all relevant times, the owner of registered trade mark No 930455 and registered trade mark No 562442. The first is for the words “Greg Norman”. The second is for a device in the form of a stylised depiction of a shark. Both marks are registered in respect of apparel, footwear and headwear in class 25.

3    In February or March 2009 one or more of the respondents took delivery of a shipment of garments in Sydney. It is common ground that the garments bore the registered trade marks. The critical issue in the trade mark case is whether the trade marks were applied to the garments with the consent of the second applicant. If so, the respondents will not have infringed the registered marks: see s 123 of the Trade Marks Act 1995.

4    A question also arises as to which of the corporate respondents is liable for any trade mark infringement that has occurred and which of them engaged in the conduct which is said to have contravened s 52 and s 53 of the Trade Practice Act 1974.

5    A further question arises as to whether the fifth respondent, Mr Dwyer, who was at all times a director of each of the corporate respondents, is also liable for trade mark infringement. No claim is made against him under s 75B of the Trade Practices Act 1974.

6    Lastly, the respondents have filed a cross-claim, which they raise defensively, seeking damages from the applicants for alleged contraventions of s 52 of the Trade Practices Act 1974.

7    It is convenient to deal first with the issues arising under the Trade Marks Act 1995 (the Act). I shall then consider the position of Mr Dwyer, before turning to the applicants’ case based upon s 52 and s 53 of the Trade Practices Act 1974. I will deal with the cross-claim last of all.

Trade mark infringement

Trade Marks Act 1995

8    Section 17 of the Act defines a trade mark as:

    … a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

9    Section 20(1) and (2) of the Act provide:

(1)    If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:

    (a)    to use the trade mark; and

    (b)    to authorise other persons to use the trade mark;

    in relation to the goods and/or services in respect of which the trade mark is registered.

(2)    The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark has been infringed.

10    Section 120(1) of the Act provides:

(1)    A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

11    Sections 122 and 123 provide various defences to a claim for trade mark infringement. Section 123 provides:

(1)    In spite of section 120, a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.

(2)    In spite of section 120, a person who uses a registered trade mark in relation to services that are similar to services in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied in relation to the services by, or with the consent of, the registered owner of the trade mark.

12    A person may only infringe a registered trade mark under s 120 if or she uses the sign alleged to infringe “as a trade mark”. In a proceeding brought by the owner of a registered trade mark against a person for infringement of the mark, the onus is on the owner to establish that the use of the sign which is alleged to have infringed the mark was “use as a trade mark.” The defences provided for in s 122 and s 123 only come into play if there has been an infringement within s 120: Transport Tyre Sales Pty Ltd v Montana Tyres Rims and Tubes Pty Ltd (1999) 93 FCR 421 (Montana) at [81].

The pleaded case

13    The allegations of trade mark infringement were pleaded in an amended statement of claim. Relevantly, it is alleged that from in or around August 2008, the respondents have done one or more of the following:

(a)    caused or procured the manufacture of;

(b)    imported;

(c)    distributed; and/or

(d)    sold or offered or exposed for sale

clothing to which the second applicant’s registered marks were affixed (paras [14]-[16]). It is also alleged that the second applicant’s marks were used by the respondents in the course of advertising and promoting the clothing (para [17]). It is then alleged that the fifth respondent, Mr Dwyer, was involved in the trade mark infringements of the corporate respondents and that he is liable for those infringements as a joint tortfeasor (paras [26] and [27]).

14    The amended statement of claim does not include any express allegation that the corporate respondents were engaged in a common design or that they are liable for trade mark infringement on that basis. However, in their written and oral opening the applicants raised such a case which they developed in evidence and final submissions without objection from any of the respondents. I am satisfied that the question whether the respondents are liable on the basis that they were party to a common design was an issue that was at all times in the ring.

Relevant Facts

The Licence Agreement

15    It is common ground that Greg Norman Collection, Inc (GNC) was, at relevant times, the head licensor of the trade mark owner, namely, Great White Shark Enterprises Inc (GWS), the second applicant. The third applicant, Lifestyle Brands Holdings LLC, was appointed the head licensor by a letter agreement dated 21 June 2009 between GWS and GNC, a copy of which is in evidence

16    I begin my analysis of the facts with the licence agreement (the Licence Agreement) made on 1 February 2007 between GNC, as licensor, and an Indian company called BTB Marketing PVT Ltd (BTB), as licensee.

17    The recitals of the Licence Agreement state:

(a)    GNC is the designer, manufacturer, marketer, distributor, seller, and licensor of high-quality apparel, bags, accessories and related products throughout the world, owns the GNC name and owns, or controls through licenses or otherwise, the rights to use and to authorize others to use the GNC trademark, service mark and trade name, and other intellectual property rights in connection with the goodwill symbolized thereby and the business appertaining thereto; and

(b)    GNC had registered or applied to register its TRADEMARKS, COPYRIGHTS, designs, patents and/or other intellectual property in many countries of the world, including without limitation the TERRRITORY defined herein; and

(c)    GNC and LICENSEE are parties to a Distribution Agreement wherein LICENSEE has been appointed by GNC as its exclusive distributor in the TERRITORY as defined herein; and

(d)    GNC desires to license the TRADEMARKS and certain other intellectual property, defined herein, in connection with the design, manufacture, marketing, distribution and/or sale of sports and casual apparel, bags and certain sportswear accessories to be distributed and/or sold in retail outlets in the TERRITORY, and LICENSEE desires to accept such a license.

18    The Licence Agreement is somewhat confusing in that the recitals suggest that GNC was the owner of the relevant trade marks. However, at the hearing the case for each side was conducted on the basis that GNC was itself a licensee of GWS and that GNC was authorised to grant a licence to BTB allowing it to use the registered marks. While it is common ground that such a licence was granted to BTB, there is a dispute as to its scope.

19    The Licence Agreement includes a definition of TERRITORY. It is defined to mean “the Union of India only”. Other relevant definitions include PRODUCTS, which is defined to mean “such ‘Greg Norman’ branded apparel, bags and certain accessories as GNC may from time to time authorise LICENSEE to sell in the TERRITORY”, and TRADEMARKS which, as defined, include the second applicant’s registered trade marks.

20    Section 2 of the Licence Agreement is headed “GRANT OF A LICENSE”. It provides:

2.1    GNC hereby grants to LICENSEE, for the term of this Agreement and no longer, a limited and non-exclusive license to use in the TERRITORY such of the TRADEMARKS, COPYRIGHTS and other intellectual property as GNC shall have indicated to LICENSEE in writing from time to time in connection with the manufacture, marketing, distribution and/or sale of LICENSED PRODUCTS, and to appoint AUTHORZED MANUFACTURERS of the LICENSED PRODUCTS in accordance with the terms contained herein; provided, however, that all such LICENSED PRODUCTS, and their packaging and/or labelling, are approved by GNC in the manner set forth in Section 6 below.

2.2    LICENSEE shall not use the TRADEMARKS, COPYRIGHTS and/or other intellectual property nor or hereafter controlled by GNC and/or its AFFILIATED COMPANIES, except as expressly stated in Section 2.1 above. Specifically, but without limitation, LICENSEE shall have no right to license or sublicense any of the TRADEMARKS, COPYRIGHTS, or other intellectual property referred to herein.

2.3    Nothing contained herein shall in any way restrict, impair, limit or affect the right of GNC and/or its AFFLIATED COMPANIES to use or license third parties to use the TRADEMARKS, COPYRIGHTS and/or other intellectual property now or hereafter owned or controlled by GNC and/or its AFFLIATED COMPANIES whether on or in connection with the LICENSED PRODUCTS or otherwise, and whether in the TERRITORY or elsewhere in the world.

2.4    LICENSEE acknowledges that this License is limited to the TERRITORY defined herein, and agrees not to sell LICENSED PRODUCTS to anyone other than its regular retail customers in the TERRITORY in the normal course of trading, and further agrees that it will not sell LICENSED PRODUCTS destined directly or indirectly for sale outside the TERRITORY without the prior written approval of GNC.

2.5    LICENSEE’S advertising, promotion, marketing, distribution and sale of the LICENSED PRODUCTS shall be subject to the terms and conditions of the Parties’ Distribution Agreement of even date.

21    Section 3 of the Licence Agreement fixes the term. Relevantly, it provides:

3.1    Term - Unless sooner terminated by either party in accordance with the provisions of this Agreement, the term of this Agreement shall be for a period commencing upon execution of this Agreement and ending on the 31st day of December, 2009. At the completion of the Term, so long as LICENSEE is not in default of any aspect of this Agreement, including the Minimum Royalty in Section 9.2 below, GNC grants to LICENSEE the right to extend the Agreement for three (3) additional years commencing January 1, 2010 (the “Option”). For purposes of the Option, the Minimum Royalty in Section 9.2 will be determined prior to the formal acceptance of the Option. This Option may be extended only upon the written agreement of the parties, with notice of extension provided to GNC between 180 and 210 days prior to the end of the initial Term.

3.2    No Continuing Rights - LICENSEE acknowledges that no rights whatsoever are extended to it beyond the expiration or termination of this Agreement, save those rights provided for in Section 14 below and, further, specifically acknowledges that it shall not be entitled to any compensatory payment on the expiration or termination of this Agreement for whatever reason.

3.3    LICENSEE acknowledges that this License Agreement is intended to run with and be co-terminable with its Distribution Agreement. Should the Distribution Agreement be terminated for any reason, this License Agreement shall automatically terminate at the same time.

22    Section 6 of the Licence Agreement is headed “APPROVAL AND QUALITY CONTROL OF LICENSED PRODUCTS”. It provides:

6.1    All LICENSED PRODUCTS shall be manufactured according to SPECIFICATIONS provided or approved by GNC pursuant to Section 6.3 below, and shall be of a quality at least as high as that of similar products manufactured by or on behalf of GNC.

6.2    LICENSEE shall continuously maintain the quality of LICENSED PRODUCTS and implement vigorous quality control procedures

6.3    All LICENSED PRODUCTS shall be manufactured according to specifications and designs provided by GNC and approved for the relevant selling period.

6.4    LICENSEE shall also submit to GNC for GNC’s written approval specimens of each item of the LICENSED PRODUCTS on which any of the TRADEMARKS or COPYRIGHTS are used, such specimens to be taken from regular production, and in sufficient quantities to enable GNC to evaluate the nature and quality of the specimens prior to their sale. Specimens so submitted will be free of cost to GNC.

6.5    To assist in quality control, an authorized representative of GNC will be permitted on request and at any reasonable time to inspect the manufacturing, packaging and storage facilities where the LICENSED PRODUCTS are manufactured, packaged or stored in order to examine the nature and quality of the LICENSED PRODUCTS then in production or inventory and where appropriate to take reasonable samples of said LICENSED PRODUCTS free of charge.

6.6    LICENSEE shall further submit to GNC for its written approval specimens of all labels, hang tags, wrappers, packaging and other associated materials on or in connection with which the TRADEMARKS and/or COPYRIGHTS will be used. All such material shall conform to GNC’s requirements and guidelines covering proper trademark and copyright usage, notices, labeling and packaging and to all requirements of local laws and regulations. GNC may, upon written notice to LICENSEE, require LICENSEE to use, at LICENSEE’s expense, labels provided by GNC or its designee.

6.7    GNC will endeavor to approve or disapprove all such products or materials promptly. Unless GNC requests additional time, if such products or materials are not disapproved within twenty (20) days after submission, LICENSEE may notify GNC designated manager by facsimile or email of its intent to proceed with said use, display or publication without explicit approval (the "Final Notice") and, provided that GNC does not disapprove of such material, five (5) days after such Final Notice has been received by GNC, the products or materials submitted shall be deemed approved. In the event that GNC disapproves of material submitted by LICENSEE, GNC shall notify LICENSEE of the changes that need to be made in order for the material to be approved and LICENSEE shall make the changes and resubmit the material pursuant to the approval process set forth above.

6.8    LICENSEE shall ensure that all LICENSED PRODUCTS packaged by or for LICENSEE bearing any of the TRADEMARKS or COPYRIGHTS shall conform to the grade, quality and label requirements specified by GNC and to all applicable local laws and regulations.

6.9    Nothwithstanding any of the forgoing, GNC reserves the right to reject, for any reason, any proposed item of LICENSED PRODUCTS or associated material submitted for approval to GNC by LICENSEE.

6.10    LICENSEE shall, if requested, provided GNC with written notice of direct factory costing and all wholesale prices for each item of LICENSED PRODUCTS produced and/or sold pursuant to this Agreement.

6.11    GNC reserves the right to approve the manner by which LICENSEE proposes to dispose of any LICENSED PRODUCTS manufactured pursuant to this Agreement which are defective or which GNC determines fall below the SPECIFICATIONS and quality standards established by GNC for style or quality, including out-of-line and obsolete styles

23    There are two other agreements in evidence which I should briefly mention. The first is an agreement entitled “Buying Agency Agreement” dated 1 February 2007 between 101 Acquisition Inc, trading as Greg Norman Collection and BTB. The second is an agreement entitled “Distribution Agreement” also dated 1 February 2007 between GNC and BTB. It is unnecessary for me to say more about these agreements. All parties agreed that it is the Licence Agreement that is central to the issues in this proceeding. I will return to the terms of the Licence Agreement later in these reasons.

The Chain of Supply

24    By virtue of s 123 of the Act the respondents will not have infringed the second applicant’s trade marks by importing or supplying goods to which the trade marks were applied with the second applicant’s consent.

25    The respondents have sought to prove that the garments which are alleged to infringe the second applicant’s trade marks were manufactured by one of the second applicant’s authorised manufacturers and that the marks were applied to the garments at the time of manufacture with the second applicant’s consent.

26    The respondents called evidence from Mr Imran Ahmed who is the general manager of a company called Sunsports (BVI) Limited (Sunsports). Sunsports operates out of Pakistan. He gave evidence of dealings he had with BTB and Mr Rahul Singh.

27    Mr Singh is the managing director of BTB. On 12 August 2008 Mr Ahmed met Mr Singh at a hotel in New Delhi. Mr Ahmed gave evidence that they discussed the possibility of Sunsports acquiring Greg Norman products from BTB for supply to the Pakistan market and the terms upon which BTB might be willing to supply Sunsports.

28    Mr Ahmed denied that he made it known to Mr Singh during their meeting that Sunsports was proposing to acquire Greg Norman products from BTB which it would sell to markets outside Pakistan. He accepted that Sunsports was proposing to sell Greg Norman products to markets outside Pakistan but says that he never told Mr Singh this. I will return to Mr Ahmed’s evidence shortly.

29    Mr Ramesh Wadhwani is the managing director of a company based in Singapore called PT International Corporation Pte Ltd (PT International). He also acted as Sunsports’ representative in Singapore. Mr Wadhwani, presumably through PT International, has been supplying merchandise to Mr Dwyer’s companies for many years.

30    Mr Ahmed contacted Mr Wadhwani, and, I infer, told him that Sunsports was able to source Greg Norman products from BTB. When this conversation occurred is not clear. Mr Wadhwani says it took place in May 2008 but I doubt that the conversation occurred then. It is likely that it did not take place until some months after this. In any event, Mr Wadhwani gave evidence, which I accept, to the effect that he understood that the Greg Norman products to be supplied by Sunsports would be genuine product in the sense that it would be manufactured and sold by an authorised licensee of the owner of the Greg Norman brand and related trade marks.

31    Mr Dwyer and Mr Wadhwani both gave evidence of telephone conversations they had with each other concerning the supply of Greg Norman products by PT International to Mr Dwyer’s company. I accept that Mr Wadhwani told Mr Dwyer during these conversations that the products were genuine goods manufactured by BTB which is a licensed supplier of Greg Norman products.

32    I also accept that Mr Dwyer visited the www.shark.com website for the purpose of satisfying himself that BTB was an authorised supplier of Greg Norman product. It is common ground that the www.shark.com website was operated by or with the approval of GWS and that the website referred to BTB as one of a number of “international dealers”.

33    Around the time of Mr Dwyer’s conversations with Mr Wadhwani, Mr Dwyer received a copy of a catalogue published by BTB. This catalogue was entitled “Greg Norman Spring 2008”. It included contact details for BTB on the second last page and a statement that “GREG NORMAN and the four colour shark logo are registered trade marks of Great White Shark Enterprises Inc.” This is a reference to the same trade marks which the respondents are alleged to have infringed.

34    The evidence includes a copy of a purchase order apparently issued by the second respondent dated 18 August 2008 and numbered PT0010. The supplier to whom the order is directed is shown as PT International. There is a delivery date of November 2008 specified. The goods referred to in the order consist of 5,212 units of Greg Norman products which are identified by, among other things, their style number, size and US dollar unit cost. The total US dollar cost of the goods is shown as US$81,272.00.

35    Mr Dwyer gave evidence that the purchase order was sent to PT International by e-mail on or about 18 August 2008. Mr Wadhwani, on the other hand, gave evidence that he received the purchase order by e-mail in November 2008. I am satisfied that Mr Wadhwani is mistaken about this. I find the purchase order was issued on or about 18 August 2008 and sent to PT International on or about that date.

36    The evidence also includes a spreadsheet entitled “Purchase Order” dated 18 August 2008 and numbered GN001/18/08/2008. It is clear that it was prepared using information contained in the purchase order directed to PT International. It identifies by reference to their style and size 5,212 garments which are the subject of the order. It does not specify any prices. A copy of the Purchase Order was e-mailed by Sunsports to BTB on 18 August 2008. This was followed by a series of e-mails commencing on that date between Sunsports and BTB concerning styles and sizes and exchanging other information that was required for preparation of an invoice.

37    Significantly, an e-mail from BTB to Sunsports sent the day the Purchase Order was sent to BTB included a statement to the effect that the goods would only be produced after a letter of credit was established. This clearly implies that the Purchase Order was to be fulfilled using goods manufactured for that purpose. It is consistent with Mr Ahmed’s evidence of what was discussed with Mr Singh. He accepted in cross-examination that it was likely that Mr Singh told him at their 12 August 2008 meeting that goods would only be produced after a letter of credit was established.

38    The evidence also includes a copy of an invoice dated 5 January 2009 for US$52,703.21 issued to Sunsports by BTB. The invoice nominates Sunsports as the consignee and buyer of 4995 articles of clothing. It refers to a purchase order number 001/08/SS/GN/2008 dated 26 August 2008. There is no purchase order in evidence with that date or number.

39    The invoice dated 5 January 2009 also indicates that the country of origin of the goods was India and that their final destination was Karachi, Pakistan. It specifies the “Port of Loading” as “Nhava Sheva” (a major port in India) and “Port of Discharge” as Singapore. It also makes reference to letter of credit number ICMLC503781 dated 23 September 2008 issued by the United Overseas Bank Limited, Singapore. It also includes a printed declaration which states that “[w]e declare that this Invoice shows the actual price of the goods described and that all particulars are true and correct.” The declaration is signed on behalf of BTB by a person identified as an authorised signatory.

40    The evidence includes a copy of a bill of lading issued at Mumbai on 22 January 2009. The shipper is shown as BTB and Sunsports is shown as both the consignee and the notify party. The goods received for shipment are described as 4995 pieces of clothing. The places of loading and delivery are shown as Nhava Sheva and Karachi respectively. The port of discharge is shown as Singapore.

41    The evidence also includes a copy of an irrevocable documentary credit (the IDC) opened by the United Overseas Bank Ltd on 23 September 2008 and showing the applicant as Sunsports and the beneficiary as BTB. The IDC specifies the applicable rules as “UPC Latest Version”. The IDC also specifies the port of loading as any in India and the port of discharge as any in Karachi. It also noted that transhipment was allowed. Transhipment refers to unloading and reloading from one vessel to another during the course of ocean carriage from the load port to the discharge port stipulated in the documentary credit: see Art 20(b) of the Uniform Customs and Practice for Documentary Credits.

42    The evidence indicates that the container into which the goods the subject of the bill of lading were packed arrived in Singapore on 6 February 2009. Payment was made to BTB under the IDC that day. Upon arrival the contents were checked and transferred to another container which was then shipped to Sydney on a different vessel. The evidence includes a further bill of lading issued in respect of this shipment. This time the shipper is shown as PT International and the notify party is shown as “Pauls Retail Pty Ltd”.

43    Mr Ahmed stated in his affidavit that the garments purchased by Sunsports from BTB were sold by Sunsports to Proshop in early February 2009. Proshop is a company related to Sunsports and is also based in Pakistan. Exhibited to his affidavit was an invoice dated 5 February 2009 purportedly issued by Sunsports to Proshop. In cross-examination he accepted that the garments were never sold by Sunsports to Proshop and withdrew his earlier suggestion that there was a sale by Sunsports to Proshop.

44    I find that the garments which are the subject of this proceeding were purchased by Sunsports from BTB. They were shipped from India to Singapore where, after having been sold by Sunspots to PT International, they were released to PT International before being shipped to Australia. I also find that they were manufactured by BTB after the IDC was established and specifically for the purpose of fulfilling Sunsports’ purchase order. It remains for me to determine which of the corporate respondents acquired the garments from PT International.

45    The applicants drew attention to the fact that the Australian Business Number (ABN) shown on the order dated 18 August 2008 is not the ABN of Paul’s Retail, even though the order refers explicitly to “Paul’s Retail Pty Limited – Subject to Deed of Company Arrangement”. The ABN instead appears to belong to the Paul’s Warehouse Discretionary Trust. However, according to the evidence of Mr Dwyer, which I accept, Paul’s Retail is the trustee of the Paul’s Warehouse Discretionary Trust.

46    There is no suggestion that there is any other company in the group of companies associated with Mr Dwyer that was called Paul’s Retail Pty Limited or that was, as at August 2008, the subject of a deed of company arrangement. Further, the evidence of the various trap purchases made by or on behalf of the applicants included copies of invoices relating to those trap purchases. In every case the invoice identifies the supplier of the relevant goods as the second respondent, Paul’s Retail Pty Ltd (Subject to Deed of Company Arrangement).

47    I therefore find that the order of 18 August 2008 was placed by the second respondent and that it was this company to whom the relevant garments were supplied by PT International. Since there is no evidence of the garments having been sold by the second respondent to another respondent before they were offered for sale through the various retail outlets it should follow that it was the second respondent that sold and offered the garments for sale to the public. However, the position is slightly complicated by the fact that the business name “Paul’s Warehouse” is registered to the first respondent, Paul’s International Pty Ltd.

48    According to the Business Names Extract which is in evidence, Paul’s International has carried on business under the name Paul’s Warehouse at a variety of locations including, 253 Princess Highway, Carlton, 854 Hunter Street, Newcastle, 127 Parramatta Road, Homebush and 573 The Kingsway, Miranda. These are all locations at which the trap purchases to which I have referred took place.

49    Under s 4 of the Business Names Act 2002 (NSW) it is an offence for a person to carry on business under a business name which is unregistered or registered in the name of some other person. The details of the business name registration suggest that it was the first respondent that was offering the goods for sale at the various premises to which I have referred. Against this, however, is the possibility that the business name registration does not given an accurate indication of which company was carrying on business at those premises at relevant times.

50    Mr Dwyer made an affidavit by way of discovery that was tendered in evidence which acknowledged that the first respondent is the owner of the business name “Paul’s Warehouse” but which went on to say that the first respondent had no other involvement in the conduct complained of in this proceeding. When cross examined on this issue, his evidence was unimpressive; he seemed to have little understanding of the role that the various companies within the group played in the business carried on under the name “Paul’s Warehouse”.

51    Although Mr Dwyer’s evidence that the first respondent had no involvement in the importation and sale of the relevant garments is put in doubt by the business name registration, the evidence of the trap purchases satisfies me that those sales were made by the second respondent. I am inclined to think that the latter evidence is more reliable than the business name registration when it comes to determining which of the corporate respondents sold, and offered for sale, the relevant garments at the retail premises where the trap purchases the subject of the applicants’ evidence were made.

52    I find that the sales of the relevant garments that were made at the various premises operated under the name Paul’s Warehouse were made by the second respondent and that it was that company which offered those garments for sale.

Did BTB know that the product was not intended for sale in Pakistan?

53    It was submitted by the applicants that BTB knew that the Greg Norman products manufactured by it for Sunsports were not intended for sale in Pakistan. For reasons which will appear, I do not consider that anything turns on this matter but I propose to make a finding in relation to this submission all the same.

54    Mr Singh was not called to give evidence. What BTB may have known concerning the ultimate destination of the Greg Norman products which it shipped to Sunsports involves an assessment of Mr Ahmed’s oral evidence and related documentary evidence.

55    Generally speaking, I found Mr Ahmed was an acceptable witness. I accept his account of his conversation with Mr Singh. In particular, I accept his evidence that he did not tell Mr Singh that Sunsports proposed to sell Greg Norman products to markets outside Pakistan.

56    I think it was probably in Sunsports’ commercial interest not to tell Mr Singh that Sunsports was proposing to ship Greg Norman products to a country other than Pakistan. Mr Ahmed is sophisticated enough to know that a direct communication along those lines might create difficulties for Mr Singh in his dealings with GNC. Of course, the fact that Mr Ahmed may not have been forthcoming with Mr Singh on this topic does not mean that Mr Singh could not have deduced for himself that the goods were destined for a country other than Pakistan.

57    On that question the shipping documents are of considerable relevance. If BTB was anxious to ensure that Sunsports did not sell the Greg Norman products which it was manufacturing for Sunsports outside Pakistan then one wonders why BTB would accept a documentary credit which allowed for transhipment in Singapore. When cross-examined in relation to this matter Mr Ahmed explained that there were commercial reasons why a person shipping goods from India to Pakistan may wish to ship the goods via a port of another country. His evidence was that at one time exports from India to Pakistan were prohibited and that this led to a practice of shipping goods via a port of a third country.

58    If that practice was intended to conceal the country of origin of the goods shipped, then the shipping documents in this case show that it would be quite unlikely to do so. In any event, Mr Ahmed accepted that the prohibition has not applied for some years now though he maintained that shipment directly from India to Pakistan still gives rise to other difficulties which make it desirable for an Indian manufacturer wishing to ship goods to Pakistan to do so via a third country.

59    The inference which the respondents ask me to draw from Mr Ahmed’s evidence is that the fact that the bill of lading and IDC allowed for transhipment in Singapore was not a matter that should have alerted BTB to the fact that Sunsports was proposing to sell the Greg Norman products outside Pakistan.

60    As I have already said, I generally found Mr Ahmed to be an acceptable witness, though, in relation to this matter, his evidence was quite vague. On the other hand, the applicants called no evidence of their own in relation to the peculiarities of trade between India and Pakistan. I have also accepted Mr Ahmed’s evidence that he did not tell Mr Singh that Sunsports wanted to buy Greg Norman product for resale outside Pakistan.

61    Further, the bill of lading and the IDC both indicated that the goods were to be shipped from India to Pakistan via Singapore. Thus, even though the bill of lading allowed for transhipment in Singapore, it still contemplated that the goods would be shipped (perhaps aboard a different vessel) to Karachi.

62    There is also the invoice dated 5 January 2009 to which I have previously referred which specifies the final destination of the goods as Karachi, which an authorised signatory of BTB declared to be true and correct. Finally, I note that Mr Singh denied in e-mails and other correspondence with GNC that BTB knew that Sunsports was proposing to supply the goods to a market outside Pakistan.

63    I find that BTB did not know that the product it supplied to Sunsports was intended for sale outside Pakistan.

Was BTB authorised to manufacture product for sale to Pakistan?

64    In July 2009, e-mails were exchanged between BTB and GNC in which GNC raised with BTB the fact that what was described as “counterfeit” product had turned up at a retail outlet in Australia and that GNC was seeking to ascertain its source. Most of these emails were exchanged between Mr Singh and Ms Blackwell. Ms Blackwell has been employed by the third respondent as Manager-International Accounts since January 2009. She had held the same position with GNC. She first took up that position in April 2007 shortly after GNC and BTB entered into the Licence Agreement.

65    In an e-mail which discussed how goods manufactured by BTB might have been acquired by PT International Mr Singh said that “BTB as a licencee/distributor wholesale [sic] and retails within the indian [sic] sub continent.” The respondents rely upon this and similar statements by Mr Singh in other e-mails and correspondence he sent to GNC as evidence that BTB was authorised by GNC to manufacture Greg Norman product for sale to other parts of the Indian sub-continent, including Pakistan. I will return to this issue shortly.

66    On 22 July 2009, Mr Singh sent to GNC a copy of a spreadsheet that listed various companies to whom BTB had supplied a number of styles in the range of Greg Norman product. The list included a reference to Sunsports of Karachi. Subsequently, on 6 August 2009, Mr Singh sent another e-mail to Ms Blackwell which stated that Sunsports was a retailer in Karachi which has been buying Greg Norman product from BTB.

67    On 17 December 2009, when the Licence Agreement was nearing its expiration date, GNC wrote to BTB advising that it would not renew or extend the Licence Agreement. In this letter GNC asserted that BTB had “shipped goods outside the territory of India in violation of Sections 2.4 and 12.3 of the Licensing Agreement”.

68    Mr Singh responded on 21 December 2009. Mr Singh asserted, in substance, that BTB had been supplying Greg Norman products to Sri Lanka, Nepal and Pakistan prior to the time the Licence Agreement was entered into when the rights to grant manufacturing licences involving the registered marks were controlled or administered (at least in so far as those territories were concerned) by Reebok India.

69    In cross-examination Ms Blackwell gave evidence that she was first told in July or August 2009 that BTB had been supplying Greg Norman product to customers in Pakistan. She said that this came as a surprise to her. In cross-examination she agreed that she had not raised any concern about BTB supplying Greg Norman product to Pakistan in the e-mails she sent to Mr Singh after becoming aware of that fact. However, she later referred to two telephone conversations which she says she had with Mr Singh about that matter.

70    The first of these conversations occurred some months before July/August 2009. Ms Blackwell gave evidence that when she spoke to Mr Singh on this occasion he expressed interest in servicing Sri Lanka, Nepal and Pakistan. According to Ms Blackwell, she told him that he “need[ed] to submit a business plan and go through the proper steps”. She said that the need for a business plan was raised with Mr Singh on a later occasion at which time he indicated that he had decided that the sales revenue from those territories was not big enough to pursue.

71    The second conversation occurred some time in August 2009 by which time Ms Blackwell knew that BTB had supplied Greg Norman product to Sunsports in Karachi. According to Ms Blackwell, she asked Mr Singh why BTB was selling product to Pakistan. She said that Mr Singh told her that he thought it was okay for BTB to service Nepal, Sri Lanka and Pakistan because this is what it had done when Reebok India was the licensor. Ms Blackwell’s evidence as to what was said during this second conversation is rather sketchy but I accept it nonetheless. I infer from her evidence that the general tenor of the second conversation was that GNC did not approve of BTB supplying Greg Norman product to Pakistan and that BTB needed to submit a business plan to GNC for its approval if BTB was to service markets outside India.

72    One reason why I accept Ms Blackwell’s evidence on this issue is that the royalty reports submitted by BTB pursuant to the Licence Agreement do not appear to account for the products supplied by BTB to Sunsports. Ms Blackwell gave oral evidence, which I accept, that the royalty reports submitted by BTB for the relevant periods did not tally with the records produced by the respondents which identified the numbers and styles of Greg Norman products supplied by BTB to Sunsports.

73    The respondents submitted that not all relevant royalty reports had been produced and that, consequently, her oral evidence is not supported by the documentary evidence. However, the royalty reports which are in evidence cover sales made between July 2008 and March 2009. Hence, they cover a period in which the relevant order was placed and the relevant payment was made under the IDC. I am therefore satisfied that the relevant royalty reports have been produced and they corroborate the oral evidence to which I have referred.

74    A likely explanation for BTB’s failure to report its sales to Pakistan in the royalty reports it sent to GNC is that Mr Singh was conscious of the fact that he did not have GNC’s approval to manufacture product for sale into that market. It is true that in July 2009 he sent to GNC the spreadsheet which referred to Sunsports of Karachi. But it is also clear from Mr Singh’s e-mail communications with GNC that Mr Singh understood by this time that the product that GNC alleged was “counterfeit” had made its way to Australia and was said by the retailer who was found selling it to have been manufactured by BTB.

75    I infer that Mr Singh understood that it was likely that GNC would establish through legal proceedings commenced against the retailer that the product which had turned up in Australia was the same product that BTB had supplied to Sunsports. This most likely explains why Mr Singh disclosed to GNC the fact that it had sold product to Sunsports when he did.

Did GNC consent to the application of the registered marks to the product shipped by BTB to Sunsports?

76    The question for me to decide is whether the second applicant consented to the application of its trade marks to the goods manufactured by BTB. This is a question of fact. It is also a question that must be decided as a matter of substance.

77    In situations where it is suggested that a trade mark has been applied to goods by the registered owner of the mark, the question whether there has been infringement will turn on the outcome of what would ordinarily be a narrow factual inquiry as to who it was that applied the mark to the goods. However, in a case where it is suggested that a registered mark has been applied to goods by a third party with the consent of the registered owner, the factual inquiry has the potential to be considerably more complicated, particularly where the consent relied upon is of a conditional nature.

78    Where a registered owner consents to another person applying the registered mark to goods on condition that the goods must not to be supplied outside a designated territory, the registered owner would not usually be regarded as having consented to the application of the mark to goods which the other person knows at the time he or she applies the mark are to be supplied by him or her outside the territory.

79    There was some evidence given by Ms Blackwell to the effect that BTB did manufacture products which were supplied to other licensees overseas. To the extent that BTB was involved in manufacturing and supplying products to other licensees (such as the first applicant) there is no reason to think that it was not authorised to do so by the trade mark owner. However, I think that activity is quite different to what occurred in the present case.

80    But for the assertions of Mr Singh in his e-mails and other communications with GNC to the effect that BTB’s territory covered the whole of the Indian sub-continent, there is no suggestion that the trade mark owner consented to the application of its marks to goods that BTB manufactured for supply by it to Sunsports. The goods supplied by BTB to Sunsports were specifically manufactured by BTB for supply by it to Sunsports outside India. This is something that was forbidden by the terms of the Licence Agreement. In particular, under section 2.4 of the Licence Agreement, BTB acknowledged that the licence was limited to India and it agreed not to sell to anyone other than its regular customers in India.

81    The applicants sought to establish that the goods supplied by BTB to Sunsports did not comply with the requirements imposed pursuant to section 6 of the Licence Agreement and that they were therefore not “LICENSED PRODUCTS” for the purposes of section 2 of the Licence Agreement.

82    The evidence relied upon by the applicants in support of this argument was given by Ms Blackwell. I did not find her evidence on this issue to be persuasive. Some matters relied upon by her to show that the goods in question did not comply with the second applicant’s requirements were based upon a misreading of the relevant manuals and technical specifications. However, the fundamental difficulty I have with the applicants’ case based upon BTB’s alleged failure to comply with manufacturing and labelling standards is that it appears to assume that the requirements of section 6 of the Licence Agreement were actually enforced. The evidence did not satisfy me they were, at least not in respects that would lead me to infer that the second applicant did not consent to the application of its marks to the relevant goods as a result of BTB’s failure to obtain approvals or otherwise comply with manufacturing and labelling standards imposed pursuant to section 6 of the Licence Agreement.

83    The products purchased by Paul’s Retail were selected by Mr Dwyer from the Spring 2008 catalogue issued by BTB. There is no reason to think that the products supplied by BTB to Sunsports were any different to those that were supplied by BTB to other customers including those referred to in the spreadsheet that BTB supplied to GNC in July 2008. GNC collected royalties from BTB in respect of such sales, which the royalty reports indicate included sales of garments with the same style numbers as those purchased by Paul’s Retail.

84    Moreover, the letter from GNC to BTB dated 17 December 2009 says nothing at all about any failure on the part of BTB to comply with any manufacturing or labelling requirements. By the time that letter was written Ms Blackwell had inspected a selection of the products that were the subject of the trap purchases. If she was of the view that BTB had been applying the registered marks to garments and labels that were not approved by GNC then I would have expected the letter to say so. Not only did the letter not say so, it stated that BTB was allowed to “sell off existing inventory to fulfill [sic] outstanding orders for a period of four (4) months”.

85    The applicants submitted that “the evidence to show that the garments are counterfeit is overwhelming”. They placed particular reliance upon what they referred to as “two non-conformities of particular note”. The first of these was the absence of country of origin labels on the garments manufactured by BTB. The second was the fact that the garments manufactured by BTB included a style of pants referred to as “swing pants” with style number GNBAP420.

86    As to the absence of country of origin labels on the garments, the applicants drew attention to section 6.8 of the Licence Agreement which required BTB to ensure that the garments conform to “all applicable local laws and regulations”. In my view this refers to the laws and regulations of India. A construction of section 6.8 of the License Agreement which required the licensee to ensure that goods manufactured by it complied with the laws and regulations of every jurisdiction in which the goods might eventually be sold would be commercially absurd. There is no evidence to suggest that the laws and regulations of India required BTB to attach country of origin labels to the garments. Nor is there any evidence to suggest that the laws and regulations of Pakistan required BTB to attach country of origin labels to the garments.

87    The applicants also submitted that a publication issued by GNC to its licensees entitled “Greg Norman Collection Vendor Manual 2008” provided for the placement of a country of origin label. However, the relevant page of that document does not support that submission. It does no more than make suggestions in relation to label placements. It does not require a licensee to affix country of origin labels to any garment to which the relevant trade marks are to be, or have been, applied.

88    As to the swing pants, the applicants submitted that this style of garment does not appear in the GNC trouser range at all and that style number GNBAP420 does not appear in either the GNC Catalogue or the Spring Buy Plan 2008. The difficulty I have with this submission is that the royalty reports which were submitted by BTB to GNC that are in evidence clearly show that products with the style number GNBAP420 were being sold by BTB between January 2008 and March 2009.

89    I would not be prepared to infer that products manufactured by BTB in respect of which GNC had received royalty payments were products to which the second applicant’s marks had been applied without the second applicant’s consent in the absence of convincing evidence to that effect. Of course, as I have previously found, royalties were not paid on the products shipped to Sunsports. But there is nothing in the evidence to suggest that those products differed in any relevant respect from the other products sold by BTB in 2008 and 2009 (including style number GNBAP420) in respect of which royalties were paid.

90    Accordingly, I am not prepared to infer on the basis of the various “non-conformities” identified by Ms Blackwell that the products manufactured by BTB for sale to Sunsports were products to which the registered trade marks had been applied without the consent of the second applicant. On the contrary, I would have found that the second applicant consented to the application of its marks to those goods but for the fact that the goods were manufactured by BTB for sale outside India.

Second respondent’s liability for trade mark infringement

91    For reasons which I have explained, I find that BTB did not have GNC’s consent to apply the registered marks to the goods which BTB supplied to Sunsports. In those circumstances, the respondents’ defence based upon s 123 of the Act cannot succeed. It follows that the second respondent which, in accordance with my earlier findings, imported, offered for sale and sold the relevant goods, is liable to the second applicant for trade mark infringement.

92    I return now to the pleaded allegations of infringement. In the present case the sale and offering for sale of the relevant goods by the second respondent were acts of infringement. The importation of the goods by the second respondent for the purpose of sale in Australia was also an act of infringement: Playboy Enterprises International Inc v Hong (trading as Australian Multibusiness Telecommunications) (2004) 63 IPR 533 at [44]. Similarly, I consider the act of distribution of the goods for the purpose of sale in Australia was also an act of infringement since it involved the use of the marks by the second respondent in the course of trade.

93    I do not accept that the second respondent infringed the registered trade marks by causing or procuring the manufacture of the relevant goods. I am satisfied that the second respondent, which purchased the goods from PT International, did not cause or procure the manufacture of the goods in any relevant sense. Even if it had procured their manufacture, this would not constitute an act of infringement of the registered trade marks given that the goods were manufactured by BTB in India.

Onus of Proof

94    For completeness I should note that there was also argument as to whether the second applicant had the onus of proving that the trade marks had been applied to the goods without its consent or whether it was for the second respondent to prove that the trade marks had been applied with the second applicant’s consent. I do not find it necessary to decide that question because, on the facts as I have found them, I am satisfied that there was no such consent given here. There are, however, some matters concerning that question that I should mention.

95    In the present case the respondents conceded that even if the registered marks on the goods which they imported and sold had been applied by or with the licence of the trade mark owner the respondents nonetheless engaged in trade mark use.

96    There is obiter dicta to justify the respondents’ concession: see Montana 93 FCR 421 at [94] and Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 at 688. But there is also authority to suggest that a person who sells goods to which a registered mark has been applied by or with the licence of the owner has not used the mark as a trade mark: Champagne Heidsieck Et Cie Monopole Societe Anonyme v Buxton [1930] 1 Ch 330; R & A Bailey & Co Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701. See also, though in slightly different contexts, Wingate Marketing Pty Limited v Levi Strauss & Co (1994) 49 FCR 89 and Irving’s Yeast-Vite Ltd v FA Horsenail (1934) 51 RPC 110.

97    In the Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 422-423 Kitto J (with whom the rest of the Court agreed) cited Champagne Heidsieck and Yeast-Vite with apparent approval as authority for the proposition that the use referred to in s 58(1) and s 62(1) of the Trade Marks Act 1955 (Cth) was use of a mark as a trade mark implying, it would seem, an acceptance of the proposition that the use made of the mark in each of those cases was not trade mark use.

98    The question whether a person who sells goods to which a trade mark has been applied with the consent of the owner of the mark uses the mark as a trade mark was recently left open by the High Court: E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 265 ALR 645 at [53].

99    The respondents’ argument before me was that, independently of the question of trade mark use by them (which was, as I have said, conceded by them to have occurred), the applicants were also required to establish that the respondents had engaged in “infringing use” and, for that purpose, had to establish that the marks on the relevant goods had not been applied by or with the licence of their owner. I do not think this is correct. There is no justification for implying any such additional requirement. If the circumstances referred to in s 123 are shown to exist then the respondents will not have infringed the registered trade marks, not because of any additional requirement of the kind now postulated but by operation of s 123 itself. The High Court observed in E & J Gallo Winery at [34] that s 123 reflects the principle established by Champagne Heidsieck.

100    As a matter of statutory construction, s 123 of the Act, in form and substance, creates an exception to infringement which, in accordance with the relevant principles of statutory construction, leads to the conclusion that it is the person who invokes the section who carries the onus of proof: Avel Pty Ltd v Multicoin Amusements Pty Ltd (1990) 171 CLR 88 at 119; Vines v Djordjevitch (1955) 91 CLR 512 at 519.

101    Even if the onus of proof is on the respondents, it is worth noting that in the circumstances of a given case it may take very little for parties in their situation to shift the evidential burden onto their opponents. In Blatch v Archer (1774) 1 Cowp 63; 98 ER 969 Lord Mansfield said at 65; 898 “that all evidence is to be weighed according to the proof which it was in the power of one side to have produced, and in the power of the other side to have contradicted.” The principle was referred to with approval in Weissensteiner v The Queen (1992) 178 CLR 217 at 225 (per Mason CJ, Deane and Dawson JJ) and it is likely to have an important role to play in situations where a registered owner is best placed to know whether a mark has been applied with or without his or her consent.

First, third and fourth respondents’ liability for trade mark infringement

102    The applicants submitted that all of the corporate respondents were jointly liable for trade mark infringement on the basis that they were party to a common design: see Thompson v Australian Capital Television Pty Ltd (1996) 186 CLR 574 at 580-581; Morton-Norwich Products Inc v Intercen Ltd [1978] RPC 501 at 515-516; Cooper v Universal Music Australia Pty Ltd (2006) 156 FCR 380 at [87] and [173]. As I have mentioned, that case was not pleaded though it was raised by the applicants in opening and closing submissions. In the present case it is at least necessary for the applicants to establish that the infringement of the registered trade marks was the result of the concerted acts of the various corporate respondents. However, that is not something the applicants can do where, as I have found, all relevant acts were performed by the second respondent.

Mr Dwyer’s Liability for Trade Mark Infringement

Relevant Facts

103    This brings me to the issue of Mr Dwyer’s liability for trade mark infringement. As I have already found that Paul’s Retail infringed the second applicant’s registered trade marks, the question that arises is whether Mr Dwyer is also liable for those acts on the basis that he and Paul’s Retail were joint tortfeasors. Before turning to the relevant legal principles, I shall reiterate a number of factual findings already made and make some additional findings relevant to the issue of Mr Dwyer’s personal liability.

104    First, Mr Dwyer was the sole director of Paul’s Retail and he was involved in the operation of that company on a day to day basis. I accept that he ran the company as if it was his own and that he exercised close personal control over other employees who were involved in its business. While the position is complicated by the existence of various related companies of which he was also a director, it was Paul’s Retail which purchased the infringing products from PT International and which sold them through the various retail outlets where the trap purchases were made.

105    Secondly, Mr Dwyer was directly involved in the purchase of the infringing products from PT International. He had the relevant telephone communications with Mr Wadhwani. The order issued by Paul’s Retail to PT International was either prepared by Mr Dwyer or, at least, by a subordinate acting on his instructions. Either way, he was closely involved in the importation and sale of the infringing products. Nevertheless, the infringing acts were those of Paul’s Retail, not Mr Dwyer. He did not import or sell the infringing goods himself. And his involvement in the importation and sale of the infringing goods was in his capacity as an executive director of Paul’s Retail.

106    Thirdly, I am satisfied that Mr Dwyer believed that the infringing products imported by Paul’s Retail were “genuine goods” in the sense that they were manufactured with the licence of the owner of the trade marks which had been applied to them and that those marks had been applied with the consent of their owner. I am not satisfied that he knew, or suspected, that the goods were not genuine in that sense. Nor am I satisfied that Mr Dwyer had any reason to believe that by importing and selling the infringing products into Australia, Paul’s Retail would thereby infringe any of the relevant trade marks.

107    Fourthly, I am not satisfied there was any element of indifference on the part of Mr Dwyer to the possibility that by importing and selling the infringing products in Australia Paul’s Retail might infringe the relevant trade marks. On the contrary, I am satisfied based upon the evidence of his dealings with Mr Wadhwani and his visit to the www.shark.com website that he took steps to satisfy himself that the goods which PT International offered to Paul’s Retail were genuine goods which Paul’s Retail could sell in Australia without infringing the registered trade marks.

Relevant Legal Principles

108    The relevant legal principles which govern Mr Dwyer’s liability for trade mark infringement were recently considered by the Full Court in Keller v LED Technologies Pty Ltd (2010) 185 FCR 449 (Emmett, Besanko and Jessup JJ). The judgments of Besanko J and Jessup J in that case essay the nature and history of the competing tests concerning the liability of a company director for a tort committed by his or her company.

109    The first of these tests is sometimes referred to as the Performing Right Society test after Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1. In that case Atkin LJ said (at 15) that “[i]f the directors themselves directed or procured the commission of the act they would be liable in whatever sense they did so, whether expressly or impliedly.” As explained by Besanko J in Keller at [272], this “…test of liability is that a director is liable as a joint tortfeasor where he or she has directed or procured the infringing acts by the company. It is the company which performs the tortious acts and a director is liable if he or she directs or procures it to do so.” It seems to me that if the Performing Right Society test was applied literally in the present case, then Mr Dwyer would be liable as a joint tortfeasor. This is because he directed and procured the importation and sale of the infringing goods by Paul’s Retail.

110    The second of the two tests referred to in Keller is sometimes referred to as the Mentmore test after the decision in Mentmore Manufacturing Co Ltd v National Merchandising Manufacturing Co Inc (1978) 89 DLR (3d) 195. Again, as explained by Besanko J in Keller at [273] the Mentmore test holds a director liable as a joint tortfeasor “only where he or she has engaged in the deliberate, wilful and knowing pursuit of a course of conduct that is likely to constitute infringement or which reflected an indifference to the risk of it.”

111    I think it is correct to say that the Performing Right Society test cannot be applied literally at least not where it is suggested that a company director acting in that capacity and in good faith has directed or procured the tortious acts of the company. A company director acting in that capacity and in good faith who directs or procures his or her company to perform an act which is subsequently held to be an infringing act will not necessarily be liable as a joint tortfeasor. Some broader consideration of the circumstances of the director’s involvement is required.

112    So much appears to me to have been accepted by Emmett J and Besanko J in Keller, each of whom accepted that the knowledge of a director that his or her company may be infringing another person’s rights is a relevant consideration. Emmett J said at [83]-[84]:

[83]    A company cannot act other than through a natural person. In considering whether a natural person is a joint tortfeasor with a company, it is necessary to show something more than that the company acted through that person. Where a person is acting in the capacity of a director, the person will not be liable for the act of the company unless it can be shown that, in so acting, the director was doing something more than acting as a director. The person must do something that makes him or her, in addition to the company, an invader of the victim’s rights (see O’Brien v Dawson (1942) 66 CLR 18 at 32–3). The mere fact that a company is small and that the director has control over its affairs is not, of itself, sufficient to make the director a joint tortfeasor with the company (see C Evans & Sons Ltd v Spritebrand Ltd (1985) 1 WLR 317 at 329; [1985] 2 All ER 415 at 424).

[84]    Infringement by a principal actor, of course, is an objective matter. For a director of a company to be held to be invading the rights of a victim of the company, by reason of the actions committed in the capacity of a director, there must be some mental element involved. Thus, in circumstances where a director can be shown to be making use of a corporation or company as an instrument whereby infringement is perpetrated, such that the director can be seen to be hiding behind the corporate veil, it may be thought that that director is going beyond actions performed merely in the capacity as director. If a company is merely the alter ego of a director, such that there is no real difference between the mind of the officer and the mind of the company, there may well be circumstances where it will be appropriate to conclude that the officer is invading the rights of a victim of the company.

In the passage cited by Emmett J in C Evans & Sons Ltd v Spritebrand Ltd (1985) 1 WLR 317 at 329 Slade J (with whom the rest of the Court agreed) accepted that Atkin LJ’s statement in the Performing Right Society case “cannot be regarded as a precise and unqualified statement of the principles governing a director’s personal liability for his company’s torts”.

113    In Keller Besanko J said at [291]:

In my opinion, in considering a director’s potential liability as a joint tortfeasor, it is necessary to consider carefully the director’s involvement in the unlawful or infringing acts. A close personal involvement in the infringing acts by the director must be shown before he or she will be held liable. The director’s knowledge will be relevant. In theory, that knowledge may range from knowledge that the relevant acts are infringing acts to knowledge of an applicant’s registered designs to knowledge of acts carried out by others.

Jessup J at [405] took a narrower view of the circumstances that would render a company director liable as a joint tortfeasor for the wrongful acts of his or her company. After undertaking an extensive review of the relevant authorities and the practical and policy considerations relevant to that issue, his Honour came down in favour of a test which, adopting language used by Le Dain J in Mentmore, requires that the director have a degree of personal involvement by which he or she “makes the tort his or her own”. In that context Jessup J drew what his Honour referred to as a crucial distinction between the acts performed by a person in his or her role as a director and acts done in a “non-company capacity”. His Honour then concluded at [407] that the question of a director’s liability for the wrongful acts of his or her company depended on:

… whether there was a dimension to his or her role which was separate from the good faith discharge of his or her duties in the service of the company. If so, there will be a basis, in accordance with general principles, for making the individual liable because he or she was involved in a joint, wrongful, enterprise with the company.

114    Thus, the personal involvement of a director acting in a “non-company capacity” is relevant to the question of whether or not the director is liable as a joint tortfeasor. It was an important factor in the case of the company director sued in Allen Manufacturing Co Pty Ltd v McCallum & Co Pty Ltd (2001) 53 IPR 400. In that case the director was held liable as a joint tortfeasor because he had, amongst other things, applied for registration in his own name of a design which was the commercial embodiment of a product made by the respondent under a licence ultimately derived from him which embodiment was held to have infringed the respondent’s registered designs.

115    However, I do not think that personal involvement of that character is a prerequisite to holding a director liable as a joint tortfeasor. Knowledge of a director that his or her company is invading another person’s legal rights is something which may in a particular case be no less significant than the personal involvement of a director of the kind identified in Allen Manufacturing. In Cooper v Universal Music Australia Pty Ltd (2006) 156 FCR 380 the managing director of the company which hosted Mr Cooper’s website was jointly liable with his company for copyright infringement in the absence of any suggestion that he had acted in any “non-company capacity”: see, in particular, Kenny J (with whom French J agreed) at [163]. Kenny J referred to Finkelstein J’s judgment in Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 177 ALR 231 and said she was inclined to agree with his Honour’s approach. In that case, in a passage also cited by Besanko J in Keller, Finkelstein J said (at [146]):

… The director’s conduct must be such that it can be said of him that he was so personally involved in the commission of the unlawful act that it is just that he should be rendered liable. If a director deliberately takes steps to procure the commission of an act which the director knows is unlawful and procures that act for the purpose of causing injury to a third party, then plainly it is just that liability should be imposed upon him. Lesser conduct may suffice. For example, if the director is recklessly indifferent as regards whether his company’s act was unlawful and would cause harm, that may also suffice. In the end it will depend upon the facts of each particular case. Where the boundary lies between the non-tortious conduct of a director who acts bona fide within the course of his authority and the tortious conduct of a director who acts deliberately and maliciously to cause harm, cannot be stated with any precision.

116    I find his Honour’s observations helpful. Though the language used by his Honour is different to that used by Emmett J and Besanko J in Keller, the approach taken by each of them seems to me to be broadly consistent.

Consideration

117    Mr Dwyer did not commit any infringing act. Nor is there any suggestion that the company which committed the infringing acts did so as agent for Mr Dwyer. On the other hand, I accept that Mr Dwyer was closely involved in his company’s infringing acts and that he directed and procured his company to perform them. Nevertheless, all that Mr Dwyer did was done by him in his capacity as a director of Paul’s Retail and at a time when Mr Dwyer genuinely believed that the infringing products imported and sold by Paul’s Retail were “genuine” goods in the sense previously discussed.

118    I think the authorities demonstrate that something more will usually be required if a director is to be held liable as a joint tortfeasor than a simple finding that he or she, while acting in that capacity, caused or directed his or her company to perform acts which are later held to be infringing acts. The extent of the director’s personal involvement in the commission of the infringing acts is no doubt critical. But his or her state of mind is itself an important aspect of that involvement. That does not mean that knowledge that the relevant acts are infringing is a prerequisite to liability. The authorities are clear in holding that it is not. Even so, a finding that a director who held an honest belief that the acts which he or she directed or procured were not unlawful is a significant consideration telling against the director’s liability. In the present case I regard that consideration as decisive.

Conclusion

119    In my opinion Mr Dwyer is not liable as a joint tortfeasor. It follows that the case against him fails and the application, in so far as it claims relief against him, should be dismissed.

Misleading Representation with respect to Price

Background

120    The applicants allege that the corporate respondents have contravened s 52(1) and s 53(e) of the Trade Practices Act 1974 by making false and misleading representations in a brochure which was circulated in about March 2009 advertising, amongst other things, various Greg Norman products. This case, as pleaded and argued by the applicants, does not depend in any way on the outcome of the trade mark infringement case.

Trade Practices Act 1974

121    Section 52(1) provides that “[a] corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or likely to mislead or deceive.” Section 53(e) relevantly provides:

A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:

…

(e)    make a false or misleading representation with respect to the price of goods or services;

…

Relevant facts

122    The brochure contains a section with a heading “GREG NORMAN COLLECTION” next to which the words “MINIMUM OF 40% OFF” also appear. In this section of the brochure, six different styles of garments are advertised. Pricing information is included in relation to each of them. It consists of the advertised price of the style, a saved amount and “RRP” (the recommended retail price). The saved amount represented the difference between the recommended retail price less the advertised price of the garment. Thus, to take an example, the style of garment described as the “Greg Norman Mens Combined Pique Polo” has an advertised price of $39.99 which is represented to result in a saving of $30 compared to the recommended retail price for that garment which is stated to be $69.99. That the brochure was intended to, and would in fact be, interpreted in this manner, is not open to doubt.

123    The problem with the brochure, according to the applicants, is that for five out of the six styles of garment referred to in the relevant section of the brochure the recommended retail price has been overstated substantially. In each of those cases the recommended retail price is overstated by between 11% and 33%. In the sixth case the applicant says that the garment does not have a recommended retail price as that style is not offered for sale in Australia.

Consideration

124    It was argued by the respondents that there is no evidence to establish what the recommended retail price was for the garments in question. I reject that argument. There was evidence from Mr Meredith that establishes what the recommended retail price for five of the six styles of garments was during the 2008 season which, I infer, commenced in the 2008 calendar year and extended into the 2009 calendar year. The price list exhibited to Mr Meredith’s affidavit specifies a recommended retail price for each of the styles advertised in the brochure except for one. In the case of the example I referred to previously, the recommended retail price for the Greg Norman Combined Pique Polo (style number SNBAK48C) is shown as $54.95.

125    It was also argued by the respondents that it was not their purpose to falsely represent the recommended retail price of the products advertised in the brochure. I reject that argument simply because a corporation may be liable for making false or misleading representations concerning price under both s 52 and s 53(e) irrespective of any intention to mislead or deceive. The correctness of that proposition with respect to both s 52 and s 53 has been well settled for many years: see, for example, Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216; Guthrie v Doyle Dane & Bernbach Pty Ltd (1977) 30 FLR 116; 16 ALR 241; Given v CV Holland (Holdings) Pty Ltd (1977) 29 FLR 212 at 217; 15 ALR 439 at 445-446; Trade Practices Commission v The Vales Wine Company Pty Ltd (1996) 66 FCR 336 at 346-347.

126    It was also argued by the respondents that the price referred to in s 53(e) refers to the price at which the goods are sold by the corporation alleged to have contravened that provision. There is no basis for reading s 53(e) so narrowly. The provision proscribes the making of false or misleading representations with respect to price. The brochure would be understood by reasonable consumers to refer to the recommended retail price specified by the manufacturer or wholesaler of the products being advertised. The recommended retail prices referred to in the brochure overstated the true recommended retail prices. It follows that the brochure conveyed false and misleading representations with respect to the price of goods. It also follows that the representations made in the brochure concerning the amounts saved were likewise false and misleading.

127    Even if I was satisfied that there was no true “recommended retail price” for the garments advertised, the brochure would still be misleading and deceptive in that it clearly represents that there is a recommended retail price when there is none.

128    The evidence does not specifically disclose which of the corporate respondents arranged for the brochure to be printed and distributed. However, the evidence includes copies of invoices issued by Paykel Media Company Pty Ltd for printing and distribution services in March 2009. These invoices refer to Paul’s Retail as the “client”. In the circumstances I would infer that the brochure was printed and distributed by or on behalf of the same company that imported and sold the products, ie., the second respondent.

Conclusion

129    I am satisfied that the second respondent contravened s 52 and s 53(e) by making false and misleading representations with respect to the price of the Greg Norman products referred to in the brochure. I am not satisfied that any of the other corporate respondents did so. The applicants did not plead a case against any of the respondents under s 75B. Other claims which were pleaded based upon s 52 and s 53(c) were abandoned by the applicants in final submissions.

The Cross-Claim

The Pleading

130    By their amended cross-claim Paul’s Retail and Mr Dwyer claim damages from the applicants in respect of what is alleged to be conduct engaged in by the applicants, or in which they were directly or indirectly knowingly involved, which was misleading or deceptive or likely to mislead or deceive. In substance it is alleged that the conduct complained of involved the making of false or misleading representations on the website www.shark.com which were then relied upon by Mr Dwyer for the purpose of deciding whether Paul’s Retail should import and sell garments bearing the registered trade marks ultimately sourced from BTB.

131    It is common ground that the name and contact details of BTB appeared in a list of “international dealers” on certain pages of the website. The name and contact details of BTB appeared immediately under the heading “India”. The name and contact details of the first applicant (Sporte Leisure) also appeared immediately under the heading “Australia/New Zealand”.

132    As pleaded, the representations alleged to have been made were as follows:

(a)    Companies or entities licensed by, or associated with, Mr Norman (the “nominated distributors”) engaged in the authorised exploitation of trade marks being his name, or consisting of symbols associated with him, around the world.

(b)    If persons were to acquire goods, including particular golfing goods, to which any such trade marks had been applied, directly or indirectly from nominated distributors, wherever they were in the world, that were listed on the website those goods would be goods ultimately authorised by Mr Norman or by the appropriate company directly or indirectly belonging to, or associated with, or licensed by, Mr Norman.

(c)    If the trading in such goods was not, by reason of the legislative or regulatory regime applicable in a country where the goods were sold, a breach of the registered trade marks legislation, neither Mr Norman or any company directly or indirectly belonging to, or associated with, or licensed by, Mr Norman would be in a position to, or further or alternatively would, make any claim that the goods were not authentic, or were misleading or deceptive, or constituted passing-off, or infringed any registered trademark.

(d)    Every licensee listed on the website was an authorised agent of Mr Norman, or directly or indirectly belonging to, or associated with, or licensed by, Mr Norman

Consideration

133    The form of the pleaded representations is somewhat artificial. This is especially true of representations (b) and (c). I am willing to assume that pleaded representations (a) and (d) were made. However, there is no evidence which would lead me to conclude that either of those representations was misleading or deceptive or likely to mislead or deceive. As to the pleaded representations (b) and (c), I am satisfied that they were not made.

134    While it is clear from the evidence that BTB was an authorised supplier of various products manufactured and sold under or by reference to the registered trade marks, it does not follow that BTB was authorised to use the registered trade marks on any product it manufactured or sold. It would not be reasonable to interpret the contents of the web pages in that way. Nor would it be reasonable to infer from the contents of the web pages that BTB was authorised to apply the registered marks to goods manufactured for sale by it outside India. Whether or not BTB was so authorised is not a question addressed by the contents of the web pages.

135    I accept that the relevant web pages might provide someone in Mr Dwyer’s position with some indication that the goods Paul’s Retail was proposing to acquire from PT International came from an “authorised” supplier. But it does not follow that products acquired from BTB would necessarily have been made or supplied with the licence of the owner of the registered marks or that, in the language of the amended cross-claim, the trade mark owner would not be in a position to make, or would not make, any claim that goods acquired from BTB infringed any of the registered trade marks. No such representation is conveyed by the web pages.

Conclusion

136    The amended cross-claim should be dismissed.

RELIEF

137    There should be declarations in an appropriate form in relation to the second respondent’s infringement of the second applicant’s registered trade marks. There should also be an order for delivery up.

138    As to injunctive relief for trade mark infringement, in my view none is justified. I have found that the second respondent did not know that it was infringing the registered trade marks when it imported and sold the relevant goods. Indeed, the second respondent is a victim of what the second applicant has established to my satisfaction was the contractual misbehaviour of one of the second applicant’s own licensed manufacturers. Further, there is no evidence from which I would infer that there is any significant risk of the second respondent engaging in further acts of infringement if an order for delivery up is made.

139    There should also be declarations in an appropriate form in relation to the second respondent’s contraventions of s 52 and s 53(e) of the Trade Practices Act 1974.

140    As to injunctive relief for the second respondent’s contraventions of s 52 and s53(e), I am satisfied that this should be granted provided that it is in appropriate terms. I do not consider the contraventions were innocent. The second respondent displayed a high level of carelessness in the way it went about advertising its products. However, the injunctions sought in the amended application are far too broad.

141    I note that the applicants abandoned their claims for pecuniary relief.

142    I will order that the applicants provide to the respondents within 7 days of today a proposed set of declarations and orders (including in relation to costs) which they contend should be made in light of my reasons for judgment.

143    I will also order that the proceeding stand over to a date to be fixed by arrangement with my associate for any further argument that may need to occur (including in relation to costs) to dispose of the proceeding on a final basis.

Associate:

Dated:    29 October 2010