Paul's Retail Pty Ltd v Lonsdale Australia Limited

Leave to appeal 23 Section 24(1A) of the Federal Court Act provides: An appeal shall not be brought from a judgment referred to in subsection (1) that is an interlocutory judgment unless the Court or a Judge gives leave to appeal. 24 Although in this case the application was not opposed, leave to appeal must not be granted unless the court is independently satisfied that the necessary conditions are met. (Luck v University of Southern Queensland (2009) 176 FCR 268 ("Luck") at 292). 25 The principles governing the grant of leave to appeal were not disputed. The test set out in Decor Corporation Industries Inc v Dart Industries Inc [1991] FCA 655; (1991) 33 FCR 397 ("Decor v Dart"), requires that: i. in all the circumstances, the decision at first instance is attended by sufficient doubt to warrant its reconsideration by a Full Court; and ii. substantial injustice would result if leave were refused, supposing the decision to be wrong. 26 In Johnston v Cameron [2002] FCAFC 251, Branson J observed, at [8]; This is not a case in which the exercise by the primary judge of discretion with respect to a point of practice and procedure is sought to be challenged. Rather, his Honour's decision, if allowed to stand, will have the practical effect of determining the claim of the Applicant to be entitled to an order under s 50 of the Federal Court Act. Leave to appeal is more readily granted in a case of this kind than in a case concerning practice and procedure only: Decor Corp v Dart Industries at FCR 400; Minogue v Williams (2000) 60 ALD 366 at [19] (FC) 27 In Welsh v Digilin Pty Ltd [2008] FCA 78 at [8], Collier J stated: Previous decisions of this Court indicate that issues that are relevant as to whether a decision is attended by sufficient doubt to warrant reconsideration include the following: - a decision may be of "sufficient doubt" where a contrary position is reasonably arguable (Tamberlin J in Johnston v Cameron [2002] FCAFC 251 at [65]) or the view taken by the trial judge is debatable (Davidson v Fesl [2005] FCAFC 183 at [22]) - leave to appeal is not necessarily granted simply because the reviewing court does not agree with every aspect of the trial judge's reasons (Energex Ltd v Alstom Australia Ltd [2005] FCAFC 215 at [65]) and - leave is more readily granted where substantive issues, rather than points of practice, are at issue (Rivera v United States of America [2004] FCAFC 154 at [13], M111 of 2003 v Minister for Immigration & Multicultural & Indigenous Affairs [2004] FCAFC 97 at [8]). 28 In Construction, Forestry, Mining and Energy Union v Radisich [2010] FCA 1004, McKerracher J stated that the tests for leave of sufficient doubt and whether substantial injustice would result "bear upon each other, so that the degree of doubt which is sufficient in one case may be different from that required in another. Ultimately, a discretion must be exercised on balancing of considerations" (at [17]). 29 In Luck, Rares J stated at [292] "[o]f course, each case [where leave is sought] must depend upon its own circumstances. Moreover, when the Court considers the question of the grant of leave to appeal, it will be attentive to the substantive context in which the primary judge determined the matter."

Whether sufficient doubt 30 As reflected in the grounds in the draft notice of appeal, Paul's challenges the trial judge's decision on the following principal grounds: 1 The primary judge erred in finding on the evidence that the signs applied to the alleged infringing goods imported by the Second Appellant which were found to be substantially identical with or deceptively similar to certain of the Respondent's Australian registered trade marks (Respondent's Australian Trade Marks), were applied to those goods without the consent of the Respondent within the meaning of s 123 of the Trade Marks Act 1995 (TM Act). 2 The primary judge erred in holding that Punch GmbH was not licensed to apply the "Lonsdale London" and "The Original Lonsdale London" marks (reproduced in Annexure D to the reasons). 3 The primary judge erred in applying s 123 of the TM Act on the basis that the signs applied to the alleged infringing goods must be the Respondent's Australian Registered Trade Marks, exactly as registered. 4 The primary judge erred in holding that the Champagne Heidsieck principle did not have the same application under the TM Act as it did in predecessor trade mark legislation. 31 Paul's summarised its proposed case on appeal as follows: 1 Paul's seeks a reversal of her Honour's finding that the Lonsdale marks that had been applied to the goods imported by Paul's were applied to the goods without the consent of Lonsdale Australia, which was the registered owner of the marks as at the date of importation and offering for sale. A number of bases for that ground are advanced. First, there was a concession by the respondent at trial that there was no relevant distinction between Lonsdale Sports and Lonsdale Australia. Secondly, it was plain on the evidence that Lonsdale Sports had granted a licence for a considerable term (which embraced the time at which the goods were made and the marks applied to them) to its European licensee, Punch GmbH, before assigning the marks for nominal consideration to Lonsdale Australia. Paul's submission will be that Lonsdale Australia took the marks subject to those previously granted licences; and that in any event-in circumstances where Lonsdale Sports and Lonsdale Australia are ultimately 100% commonly owned; their parents have common officers; they operate from precisely the same business address; the companies operate as a group; and the companies operate in such a way as to create shared international goodwill-that Lonsdale Sports continuing consent to the application of the marks by Punch GmbH should be taken as consent given by Lonsdale Australia. 2 Additionally, and contrary to her Honour's finding that on its proper construction the Punch GmbH licence did not extend to applying the "Lonsdale London" and the "original Lonsdale London" marks, the Lonsdale Sports/Punch GmbH licence included a licence of the LONSDALE word mark, which is the form that conventionally embraces all uses in all forms of the word mark. Moreover, her Honour found that the Lonsdale marks with the addition of "London" and "the original ... London" meant that they were different marks. Paul's will submit that only differences substantially affecting the identity of the mark should be taken into account, even assuming Her Honour's test is correct; and those difference [sic] do not meet that test. Moreover, design variations on the clothing were permitted by the Lonsdale Sports/Punch GmbH licence. Thus Paul's will submit that her Honour's finding that the Punch goods were, in effect, "counterfeit goods" is wrong; Paul's will also submit that Her Honour should not have made a finding of that sort without Punch being joined, and that if Punch was to be joined it fell to the respondent to do so (News Ltd v Australian Rugby Football League Ltd (1996) 64 FCR 410 at 523-527). 3 Paul's will also submit that her Honour misconstrued s 123 of the TM Act, and (a matter that is also a subject of a pending special leave application to the High Court) that the principle found in the line of cases commencing with Champagne Heidsieck continues to apply in Australia. (emphasis in original) 32 While Lonsdale Australia did not concede that the above factors cast doubt on the trial judge's decision, it acknowledged that leave is more readily granted when the decision is akin to final relief. 33 In assessing whether there is sufficient doubt in the relevant sense, "the substantive context" of the primary decision (Luck) is relevant and the application should be considered "in all the circumstances" as required by Decor v Dart. In this case, there was an extremely expedited trial, it was not disputed that discovery was "very limited" and liability was determined separately from quantum. The need for a hearing on damages or the taking of an account (following which Paul's could appeal as of right) will be avoided if Paul's succeed on appeal and the time and expense of the parties and the court's will be saved. It was also appropriate to weigh the degree of doubt against the substantial injustice that may result. Paul's proposed case on appeal appeared on a preliminary assessment to be reasonably arguable. As (for the reasons set out below) I considered that substantial injustice would result if leave were refused but the primary decision were wrong, the necessary degree of doubt was reduced. In all the circumstances, I was satisfied there was sufficient doubt, in the relevant sense, to warrant reconsideration by a Full Court.

Substantial injustice 34 I was persuaded that there would be substantial injustice to Paul's should leave to appeal be refused, as although the judgment is interlocutory (thus falling within the ambit of s 24(1E) of the Federal Court Act) the permanent injunction, declaration and delivery up orders made on 8 June 2012 were in the nature of final relief. 35 It was not disputed that the Lonsdale Goods represent an investment of millions of dollars by Paul's. There was no challenge to Paul's assertion that the interlocutory injunction, now permanent, all but wiped out the first applicant's winter trade for 2012 and significantly diminished its income, causing it to operate on a diminished scale.

Expedited hearing of appeal 36 Further, in my opinion, expedition of the appeal was appropriate. Rule 36.11 of the Federal Court Rules 2011 (Cth) ("the 2011 Rules") under which a party may apply for directions in relation to the management, conduct and hearing of an appeal, and s 25(2B)(c) of the Federal Court Act (conferring power to give directions about the conduct of an appeal) are a sufficient basis for an order for expedition, although the 2011 Rules contain no specific rule corresponding to O 52 r 37(1) of the former Federal Court Rules (Federal Court Rules 1979 (Cth)). 37 The matters giving rise to urgency were set out in the affidavits of Ms Vanyi and Mr Dwyer, which were updated by the supplementary submissions. Paul's has incurred significant financial costs and burdens for the purchase of the goods and ongoing expenses which would not be recoverable even were the judgment below overturned. Further, as Lonsdale Australia is no longer subject to an undertaking as to damages Paul's is without an avenue for compensation. 38 Lonsdale Australia asserted no prejudice should the appeal be expedited and did not oppose expedition. As North J observed in British American Tobacco Australia v Secretary, Department of Health & Ageing [2011] FCA 718 (at [7]), it is also necessary "to balance the consequences of refusing an order for expedition against the effect on other litigants waiting in the appeal list". If not expedited, the appeal was, in the ordinary course, unlikely to be heard prior to the November 2012 sittings, while the financial impact on Paul's would continue. I considered that the appeal should be expedited to the extent practicable in order to minimise the likelihood of the closure of stores, retrenchment of employees and jeopardy to the viability of the business. I certify that the preceding thirty-eight (38) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dodds-Streeton.