Guttershield v LBI Holdings - [2005] NSWSC 113

CITATION:
Guttershield v LBI Holdings [2005] NSWSC 113

HEARING DATE(S): 23 February 2005

JUDGMENT DATE :

23 February 2005

JURISDICTION:
Equity

JUDGMENT OF:
Campbell J

DECISION:
Trademarks fall within "intellectual property" within the meaning of "all intellectual property developed by the Alliance" in a particular agreement

CATCHWORDS:
CONTRACTS - construction of particular agreement - whether trademarks fall within "intellectual property" within the meaning of "all intellectual property developed by the Alliance" in a particular agreement

LEGISLATION CITED:
Trademarks Act 1995

CASES CITED:
Guttershield v LBI Holdings [2004] NSWSC 941

PARTIES:
Guttershield Systems Australia Pty Ltd - First Plaintiff/First Cross-Defendant
Guttershield Pty Ltd - Second Plaintiff/Second Cross-Defendant
LBI Holdings Pty Ltd - First Defendant/First Cross-Claimant
Leafbusters Pty Ltd - Second Defendant/Second Cross-Claimant
Bruce Wickett - Third Cross-Defendant

FILE NUMBER(S):
SC 5724/02

COUNSEL:
G Grinter - Plaintiffs/Cross-Defendants
S Reuben - Defendants/Cross-Claimants

SOLICITORS:
John Brent & Co - Plaintiffs/Cross-Defendants
Denes Ebner - Defendants/Cross-Claimants

LOWER COURT JURISDICTION:

IN THE SUPREME COURT
OF NEW SOUTH WALES
EQUITY DIVISION
EQUITY LIST

CAMPBELL J

WEDNESDAY 23 FEBRUARY 2005

5724/02 GUTTERSHIELD SYSTEMS AUSTRALIA AND ANOR v LBI HOLDINGS PTY LTD & ANOR

JUDGMENT – Ex Tempore

1 HIS HONOUR: This is a matter concerning which I gave judgment on 25 October 2004: Guttershield v LBI Holdings [2004] NSWSC 941. On 24 November 2004 I made an order for the determination of a separate question, namely whether trademarks fell within the scope of the expression “intellectual ... property developed by the Alliance” in Clause 3 of the Agreement of the Alliance dated 10 March 1999.

2 My earlier judgment set out the terms of the agreement of the Alliance at paragraph [17]. I will not repeat them here. At paragraphs [42] – [44] I set out the argument concerning construction, and conclusions which I had arrived at.

3 It is common ground that, before the Alliance was entered into, the three members each carried on their own businesses, and had their own business names and trademarks connected with those businesses. The present dispute does not relate to the trademarks which the Alliance members had when the Alliance began, it relates to trademarks which were developed after that date.

4 Mr Grinter, counsel for the plaintiff, submits that, in some ways, a trademark is not well suited to be called “intellectual property”. The Trademarks Act 1995 defines a trademark in section 17 as:

“A trademark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”

5 At common law, a trademark is, in broad terms, a mark which distinguishes goods or services from similar goods or services, and identifies them with some entity associated with the goods or services in the course of their production, distribution, or provision, or with whose approval the goods or services are produced, distributed or provided. An indicator of a trade connection does not,…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2005] NSWSC 113
Decision Date: 23 February 2005

CaseChat Overview and Summary

The case before the court involved Guttershield, a manufacturer of waterproofing products, and LBI Holdings, a company involved in the construction industry. Guttershield brought an action against LBI Holdings, alleging a breach of contract and seeking damages for the unauthorized use of its trademarks. The dispute centred around whether certain trademarks fell within the definition of "intellectual property" as described in their agreement. The matter was heard in the Supreme Court of New South Wales.

The primary legal issue before the court was the interpretation of the term "intellectual property" as used in the contract. Guttershield argued that the trademarks in question fell within the definition of "intellectual property" and that LBI Holdings' use of these trademarks constituted a breach of the agreement. LBI Holdings, on the other hand, contended that the trademarks did not fall within the definition of "intellectual property" and, therefore, their use was not prohibited by the agreement. The court had to determine whether the trademarks were indeed a form of intellectual property as per the agreement and, if so, whether LBI Holdings had breached the agreement by using them without authorization.

The court considered the ordinary meaning of the term "intellectual property" and examined the context in which it was used in the agreement. The court held that the term "intellectual property" in the agreement should be given its ordinary meaning, which includes patents, copyrights, and trademarks. The court found that the trademarks in question were a form of intellectual property and that LBI Holdings' use of these trademarks without authorization constituted a breach of the agreement. The court awarded Guttershield damages for the unauthorized use of its trademarks and ordered LBI Holdings to cease and desist from using Guttershield's trademarks in the future. The court further directed that any ongoing use of the trademarks would result in additional damages being awarded to Guttershield.

Orders