Prismex Technologies Pty Ltd & Anor v Keller Industries Pty Ltd & Ors [2006] FCA 1504

The implied licence granted by Prismex Technologies to Interium was at least revocable when Interium's liquidation was imminent, because an irrevocable licence surviving liquidation would defeat the purpose of the two-company structure that separated the patent from trading risks. Prismex Technologies effectively terminated the licence on 30 June 2006, so Keller did not acquire the licence or equitable ownership of the patent. However, Keller, as assignee of Interium's relevant rights, established that Taggert and Ashall trespassed on Interium's former premises, that Taggert converted films made during Interium's time and the jig, and that Ashall's destruction of silk screens amounted to...

Jurisdiction: Australia
Judgment Date: 14 November 2006
Procedural Posture: Patent Licence, Trade Mark, Trade Practices and Tort Proceeding With Cross Claim / Expedited Trial on Liability; Quantum and Remedies Deferred
Outcome: Liability determined in part: Prismex Technologies' termination of Interium's licence was effective; Keller did not obtain the patent licence or equitable ownership; Keller established liability for trespass, conversion, trade mark infringement and misleading or deceptive conduct in the respects identified; remedies...
Legal Topics: ['revocability of Licence to Exploit Patented Invention' 'effect of Liquidation of Licensee' 'assignment of Licence by Liquidator' 'constructive Trust Over Patent' 'trespass to Land' 'conversion and Bailment' 'trade Mark Infringement by Promotional Correspondence' 'misleading or Deceptive Conduct']

['patent Law' 'trade Marks' 'trade Practices' 'tort' 'equity' 'contract'] ['revocability of Licence to Exploit Patented Invention' 'effect of Liquidation of Licensee' 'assignment of Licence by Liquidator' 'constructive Trust Over Patent' 'trespass to Land' 'conversion and Bailment' 'trade Mark Infringement by Promotional Correspondence' 'misleading or Deceptive Conduct']

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Procedural Posture

Patent Licence, Trade Mark, Trade Practices and Tort Proceeding With Cross Claim / Expedited Trial on Liability; Quantum and Remedies Deferred

Legal Issues

1 ["Whether Interium's exclusive licence to exploit Australian Patent No 647834 was perpetual and irrevocable or revocable by Prismex Technologies when Interium went into liquidation." "Whether the licence was assigned to Keller under the sale of Interium's business assets." 'Whether Interium or Keller was the equitable owner of the patent by constructive trust.' "Whether Taggert and Ashall committed trespass to land by entering Interium's former premises on 3 July 2006." 'Whether removal of acetate films and a jig, and damage to silk screens, amounted to conversion or trespass to goods.' "Whether X-Position's use of the PRISMEX trade mark in promotional emails infringed the trade mark." 'Whether Prismex Technologies or X-Position engaged in misleading or deceptive conduct or other contraventions of the Trade Practices Act 1974 (Cth).']

Ratio Decidendi

Court Disposition

Liability determined in part: Prismex Technologies' termination of Interium's licence was effective; Keller did not obtain the patent licence or equitable ownership; Keller established liability for trespass, conversion, trade mark infringement and misleading or deceptive conduct in the respects identified; remedies...

Orders

['The proceeding be listed for further hearing on a date to be fixed.']