Corrs Chambers Westgarth has acted for Billabong (ASX:BBG) and Quiksilver (NYSE:ZQK) in their successful Federal Court summary judgment application against Australian importer and retailer Paul’s Retail Pty Ltd, the entity behind Paul’s Warehouse.

Billabong and Quiksilver were successful in their joint proceedings in the Australian Federal Court alleging that Paul’s was, among other things, importing and selling counterfeit clothing products; importing and selling clothing products bearing artistic works protected by copyright without authorisation; and reproducing stylised trade marks in its brochures and advertising materials in promoting those products.

The Corrs team was led by partner Stephen Stern and Special Counsel Dan Plane, and included lawyer Chrystal Dare.

Corrs Partner Stephen Stern said: “The decision should act as a guide to brand owners seeking to protect their intellectual property rights, and as a warning to retailers who may be flying close to the wind in relation to the intellectual property rights of others. Genuine apparel that includes an artistic work cannot be imported into and sold in Australia without the express consent of the copyright owner.”

“The matter was evidence-intensive. Billabong and Quiksilver coordinated proof of creation and ownership of artworks and graphic designs from around the world to ensure that a wide range of infringements were able to be addressed by the Court. That coordination paid off for our clients in their successful joint proceedings.”

“Paul’s put Quiksilver and Billabong to the proof of the existence and their ownership of the copyright works, but the decision left no doubt as to the strength of Billabong’s and Quiksilver’s IP rights, and the scope of protection afforded by those rights.”

The case continues in respect of quantification of damages or profits owed by Paul’s to Billabong and Quiksilver, and the personal liability of Mr Paul Dwyer.

Background: about the matter

Billabong and Quiksilver issued Federal Court proceedings against Paul’s, after being unable to negotiate a resolution, in mid-2010, then filed an application for summary judgment.

Billabong and Quiksilver were looking for an efficient means of addressing their broad range of concerns regarding Paul’s conduct.

On 2 August 2011, the Court gave judgment in Billabong and Quiksilver’s favour on each of their claims in the summary judgment application. Through this summary judgment application, the Corrs team was able to obtain a wide-ranging decision from the Court leaving no doubt as to the strength of Billabong’s and Quiksilver’s IP rights, and the scope of protection afforded by those rights.

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