Charter Pacific Corporation Limited v Securicom (NSW) Pty Limited (No 4) [2021] NSWSC 1618

Charter Pacific Corporation Limited v Securicom (NSW) Pty Limited (No 4) [2021] NSWSC 1618

The asserted licences relied upon by Mr Burke and Microlatch HK were either not established as genuine, had been terminated, came to an end when the liquidators sold the relevant patents to CPC Patent Technologies Pty Ltd, or were disclaimed by the liquidators under s 568(1)(f) of the Corporations Act 2001 (Cth). The Active Defendants therefore had no ownership interest or licence in respect of the Patents. Representations by Mr Burke and Microlatch HK, and by Mr Fyvie and Microlatch Technologies, that one or more of them had exclusive rights or licences in respect of the Patents were false and misleading in contravention of s 18 of the Australian Consumer Law. CPC Patent Technologies Pty...

Jurisdiction
Australia
Judgment Date
14 December 2021
Procedural Posture
Equity Commercial List; Principal Judgment / Final Hearing on Plaintiffs' Further Amended Summons for Declarations and Permanent Injunctions, and Dismissal of Cross Claim
Outcome
Declarations and permanent injunctions granted substantially in favour of the plaintiffs; cross-claim dismissed with costs; relevant defendants ordered to pay plaintiffs' costs of specified relief.
Legal Topics
['misleading or Deceptive Conduct' 'patent Ownership and Licensing' 'permanent Injunctions' 'declarations' 'liquidator Sale of Patents' 'disclaimer of Licence Agreements' 'cross Claim']
['consumer Law' 'equity' 'intellectual Property' 'corporations'] ['misleading or Deceptive Conduct' 'patent Ownership and Licensing' 'permanent Injunctions' 'declarations' 'liquidator Sale of Patents' 'disclaimer of Licence Agreements' 'cross Claim']

Case Brief

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Procedural Posture

Equity Commercial List; Principal Judgment / Final Hearing on Plaintiffs' Further Amended Summons for Declarations and Permanent Injunctions, and Dismissal of Cross Claim

Legal Issues

  1. 1 ['Whether the second, seventh, eighth and ninth defendants engaged in misleading or deceptive conduct in contravention of s 18 of the Australian Consumer Law by representing that they had rights in relation to the Patents.' 'Whether the Active Defendants had any ownership interest in, or licence to use or exploit, the Patents.' 'Whether CPC Patent Technologies Pty Ltd was the beneficial and legal owner of the Patents and exclusively entitled to bring proceedings for infringements.' 'Whether permanent injunctions should restrain the Active Defendants from asserting ownership, licence or other rights in respect of the Patents.' 'Whether the cross-claim should be dismissed.']

Ratio Decidendi

The asserted licences relied upon by Mr Burke and Microlatch HK were either not established as genuine, had been terminated, came to an end when the liquidators sold the relevant patents to CPC Patent Technologies Pty Ltd, or were disclaimed by the liquidators under s 568(1)(f) of the Corporations Act 2001 (Cth). The Active Defendants therefore had no ownership interest or licence in respect of the Patents. Representations by Mr Burke and Microlatch HK, and by Mr Fyvie and Microlatch Technologies, that one or more of them had exclusive rights or licences in respect of the Patents were false and misleading in contravention of s 18 of the Australian Consumer Law. CPC Patent Technologies Pty...

Court Disposition

Declarations and permanent injunctions granted substantially in favour of the plaintiffs; cross-claim dismissed with costs; relevant defendants ordered to pay plaintiffs' costs of specified relief.

Orders

  • ['Declare that the second, seventh, eighth and ninth defendants have engaged in conduct that is misleading and deceptive in contravention of s 18 of the Australian Consumer Law by falsely representing that one or more of them have rights in relation to one or more of the patents listed in Schedule 1 (the Patents).'...