Quiksilver PTY Ltd & Anor v Charles Robertson (Developments) Ltd (t/a "Trago Mills")

Implied consent to the placing of trade-marked goods on the market in the EEA requires facts and circumstances that unequivocally demonstrate the proprietor’s intention to renounce its right to oppose that marketing. Silence, failure to object, absence of territorial warnings, or an unrestricted right of resale do not, without more, establish consent. A financier acquiring goods as security has no presumed EEA market, so express consent will ordinarily be required if it wishes to ensure that resale in the EEA is authorised. Consent by a manufacturer’s licensee is not binding on the trade-mark proprietor where the licensee lacked authority to give it. An exclusive licensee may have standing to sue where the licence confers rights and remedies equivalent to those of an assignee.

Quiksilver, proprietor of registered trade marks, and Na Pali, its exclusive European licensee, sued a discount retailer for selling genuine Quiksilver goods in the EEA. The goods had been manufactured by Palimar under a licence restricted to territories outside the EEA. They reached the defendant after a financier enforced security following the purchaser’s default.

The trial concerned liability only. The principal issues were whether Quiksilver or Palimar had consented to the goods being put on the EEA market under section 12(1) of the Trade Marks Act 1994, and whether Na Pali had standing to sue.

1. The claimants succeeded on liability. The defendant’s sale of the goods infringed the trade marks because it failed to establish consent within section 12(1) of the Trade Marks Act 1994.

2. Applying Davidoff SA v A and G Imports [2002] RPC 20, consent must be express or implied only where the relevant facts and circumstances unequivocally demonstrate that the proprietor has renounced its right to oppose placing the goods on the EEA market. Consent could not be inferred from the absence of resale restrictions, the financier’s Spanish address, the location of shipment, or the commercial possibility that Europe might be the most convenient market.

3. Palimar had not consented. Its understanding was that the goods would be sold in specified former Soviet republics. In any event, Palimar’s restricted licence gave it no authority to consent on Quiksilver’s behalf, and the catalogues and website did not amount to a holding out of such authority.

4. Quiksilver’s failure to sue or threaten MFC did not amount to implied consent. Its letter expressly stated that the goods were not authorised for sale in the EU. Treating that conduct as consent would amount to deemed consent, contrary to the applicable legal principle.

5. Na Pali had standing. Clause 5.3(c) of the licence agreement authorised it to sue on its own behalf where Quiksilver chose not to prosecute the action, while remaining willing to be joined as co-claimant without bearing the costs. That clause supplied rights and remedies equivalent to those of an assignee for the purposes of sections 30(3) and 31(1) of the Trade Marks Act 1994.

6. Both claimants were entitled to damages to be assessed.