|Great White Sharks can be pretty scary ...|
There are three key points to appreciate here:
1. 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. 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. 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.
2. 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. The extent of the director's personal involvement and his state of mind is important. 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.
3. 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. As a matter of construction, because section 123 of the Act creates an exception to infringement, the burden of proof lies on the person invoking the section. However, in certain circumstances, it may take little for the evidential burden to shift to the registered owner.
|... but the IPKat is not |
Great White Shark here
Great White Sharks here
Great White Shark recipe here
Three Little Fishes here [not-to-be-missed performance by Frankie Howerd]