Tagged: Case Note

Failures to change corporate names and deliver up infringing material leads to fines for contempt

Late last year, the Federal Court ordered that the fourth respondent, Bob Jane, and the companies he controlled, be restrained from trading as a business under any name that is or includes the word JANE. The corporate respondents were also ordered to forthwith change their names, transfer certain domain names and deliver up promotional material to Bob Jane Corporation. Early this year, Bob Jane Corporation brought charges of contempt of court against each of Bob Jane and various of the corporate respondents he controlled for failure to comply with those orders. Bob Jane Corporation sought a declaration of guilt and imposition of a fine in relation to each alleged contempt.

When is an exclusive patent licence not so exclusive?

The first applicant, Damorgold, successfully established that JAI Products had infringed the patent in suit. A residual issue left for later determination was whether the second applicant, Vertilux, was an exclusive licensee of the patent and therefore also entitled to have initiated proceedings pursuant to section 120 of the Patents Act 1990. A written licence was in place between Damorgold and Vertilux that imparted on Vertilux an exclusive licence to exploit the patent, and also purported to record the terms of an oral licence between the parties said to have been in place at least since the start of 2006. Under the licence, Vertilux was entitled to grant sublicences, with Damorgold’s written consent (although Damorgold could waive that requirement).

Successful patentee not required to amend patent to reflect adverse findings in respect of certain claims before obtaining relief for infringement

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Following on from his Honour’s decision reported above, JAI Products asserted that, because the only patent claims upon which Damorgold succeeded were dependent on claims that had been found invalid, it was necessary for Damorgold to amend the patent pursuant to section 105 of the Patents Act before it was entitled to an order for injunctive relief. JAI Products plainly wished to argue that the Court should exercise its discretion not to amend the patent because of culpable delay or the like.

Solicitors acting for financers and lenders in financing transactions must take care to avoid nasty surprises after settlement

Co-authored by Andrew Kirby and Kieran Hickie: The Court of Appeal has affirmed the importance of solicitors acting for mortgagees to ensure payout figures and settlement instructions provided to settlement agents are accurate. Following settlements of refinancing transactions, an outgoing mortgagee will not necessarily be prevented from asserting that settlement funds are insufficient to finalise settlement. Rather, they may demand the return of a discharge of mortgage handed over at settlement on the basis the borrower has not complied with its obligation to pay out the registered mortgagee in full.