Charter Pacific v Securicom [2020] NSWSC 1067

"Stop telling everyone you own my patents!"

___

Some Ps asked the Court for an interlocutory injunction – an immediate stop – preventing some Ds from saying they owned, or had a licence to use, some patents.

The Ds accepted they didn’t own them: [37]

But the Ds' website said they had an exclusive licence to use them and that one of the Ds owned or exclusively controlled them: [108], [111]

The Ps said this was misleading and deceptive, and that an interlocutory injunction should be granted: [31], [33]

The Court had to direct its attention to (i) whether there was a serious question to be tried and (ii) whether the balance of convenience favoured an injunction: [41]

There was back-and-forth about various versions of patent licence deeds: [55] to [97]

The Ds argued for the validity of a certain deed; such validity meaning the website was not misleading. The Court found it was seriously arguable that the deed was not valid, meaning the representations would be misleading: [139]

There was also a serious question – if the licence was valid – as to whether the liquidator's s568(1) disclaimer of it as an "unprofitable contract" was effective: [147]

The Court found the balance of convenience favoured relief: [163]

Injunction granted: [207]