Elecon Australia Pty Limited v PIV Drives GmbH [2010] FCAFC 56

Elecon Australia Pty Limited v PIV Drives GmbH [2010] FCAFC 56

Clause 16 of the Know-How Contract, properly construed, conferred any continuing manufacturing right only where the agreement was terminated by the licensor; because Elecon Engineering terminated the agreement, no continuing right to use the catalogues, trade marks, manufacturing secrets or know-how arose. PIV Drives acquired the confidential information subject to Elecon Engineering's licence while it endured, and there was no basis to deny equitable relief because no loss of exclusivity or unconscionable conduct discharging the confidentiality obligation was established. The challenge to particular trade mark findings did not undermine the unchallenged basis for the declaration,...

Jurisdiction
Australia
Judgment Date
28 May 2010
Procedural Posture
Appeal to the Full Court of the Federal Court of Australia / Appeal From Elecon Australia V Brevini Australia Pty Ltd [2009] FCA 1327; Appeals NSD 1429 of 2009 and NSD 1430 of 2009
Outcome
Both appeals dismissed.
Legal Topics
['construction of Licence Agreement Termination Clause' 'survival of Manufacturing Rights After Termination' 'breach of Confidence and Equitable Relief' 'assignment of Confidential Information' 'trade Mark Infringement Findings and Inquiry as to Damages or Account of Profits']
['contract' 'equity' 'intellectual Property' 'trade Marks' 'confidential Information'] ['construction of Licence Agreement Termination Clause' 'survival of Manufacturing Rights After Termination' 'breach of Confidence and Equitable Relief' 'assignment of Confidential Information' 'trade Mark Infringement Findings and Inquiry as to Damages or Account of Profits']

Case Brief

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Procedural Posture

Appeal to the Full Court of the Federal Court of Australia / Appeal From Elecon Australia V Brevini Australia Pty Ltd [2009] FCA 1327; Appeals NSD 1429 of 2009 and NSD 1430 of 2009

Legal Issues

  1. 1 ['Whether cl 16 of the Know-How Contract gave Elecon Engineering a continuing right after termination to manufacture articles using technical information already transferred by PIV Antrieb.' "Whether PIV Drives and Brevini Australia were disentitled to equitable relief for breach of confidence because of the assignment of PIV Antrieb's assets and alleged repudiation or unconscionable conduct." 'Whether it was necessary to deal with the trade mark challenge in ground 6 concerning findings based on particular documents.']

Ratio Decidendi

Clause 16 of the Know-How Contract, properly construed, conferred any continuing manufacturing right only where the agreement was terminated by the licensor; because Elecon Engineering terminated the agreement, no continuing right to use the catalogues, trade marks, manufacturing secrets or know-how arose. PIV Drives acquired the confidential information subject to Elecon Engineering's licence while it endured, and there was no basis to deny equitable relief because no loss of exclusivity or unconscionable conduct discharging the confidentiality obligation was established. The challenge to particular trade mark findings did not undermine the unchallenged basis for the declaration,...

Court Disposition

Both appeals dismissed.

Orders

  • ['In NSD 1429 of 2009, the appeal be dismissed.' "In NSD 1429 of 2009, the appellants pay the respondents' costs of the appeal." 'In NSD 1430 of 2009, the appeal be dismissed.' "In NSD 1430 of 2009, the appellant pay the respondent's costs of the appeal."]