Copyright—Circuit layouts—Application of legislation—Importation before commencement—Sale after commencement—Infringement Requirement that infringer know that exploitation not licensed by owner—"Owner"—"ether infringer must know that conduct involves commercial exploitation of protected layout—Defence where infringer unaware that eligible layout rights existed—Defence ceasing to be available when infringer becomes aware that tights existed and or agrees to pay equitable remuneration—Circuit Layouts Act 1989 (Cth), ss. 7, 8,19(3),20. Constitutional Law (Cth)—Powers of Commonwealth Parliament Copyright—Circuit layout legislation—Acquisition of property from those adversely affected by intellectual property rights created—Whether acquisition otherwise than on just terms—The Constitution (62 and 63 Viet. c. 12), s. 51 (xviii), (xxxi)—Circuit Layouts Act 1989 (Cth).
Orders
Appeal allowed.
Application for leave to cross-appeal refused.
Parties to bring in agreed draft minutes of further orders (including orders in respect of costs in accordance with the reasons for judgment) on or before 30 June 1994.
If the parties are unable to reach agreement, written submissions as to the appropriate orders to be made to be filed and served by the parties on or before 14 July 1994. Parties to have liberty to file and serve written submissions in reply on or before 28 July 1994.
The proceedings stood over to a date to be fixed.
Decisions
MASON CJ, BRENNAN, DEANE, TOOHEY, GAUDRON AND McHUGH JJ The appellant, Nintendo Company Limited ("Nintendo"), instituted proceedings in the Federal Court of Australia against the respondents, Centronics Systems Pty. Limited ("Centronics") and the three directors of that company, claiming infringement of a variety of intellectual property rights. The parties resolved claims of trade mark and copyright infringement leaving unresolved the claim giving rise to the present appeal, namely, a claim by Nintendo for injunctive relief and damages for alleged infringement of its rights under the Circuit Layouts Act 1989 (Cth) ("the Act") in an "original circuit layout" ("the Nintendo layout"). The Nintendo layout is a plan showing the location of the components of a complex electronic circuit which, when incorporated in a Read Only Memory chip, is used in video game machines manufactured and marketed by Nintendo.
2. The learned trial judge (Sweeney J) upheld Nintendo's claim of infringement of its rights in the Nintendo layout. His Honour granted injunctive and ancillary relief, leaving the question of damages for subsequent determination. Centronics and the three directors appealed to the Full Court of the Federal Court. The Full Court (Northrop, Beaumont and Burchett JJ) upheld the appeal, set aside the relevant orders of the trial judge and ordered that the proceedings in the Federal Court be dismissed in so far as they related to the circuit layout claim ((1) Centronics Systems Pty. Ltd. v. Nintendo Co. Ltd. (1992) 111 ALR 13.). The present appeal…
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
AGLC
Nintendo Co Ltd v Centronics Systems Pty Ltd [1994] HCA 27
Case
[1994] HCA 27
Decision Date
CaseChat Overview and Summary
Nintendo Co Ltd (Nintendo) brought proceedings against Centronics Systems Pty Ltd (Centronics) in the Federal Court of Australia, seeking to restrain Centronics from infringing its trade mark. The dispute concerned the use of the word "Nintendo" on goods sold by Centronics, which Nintendo alleged constituted a breach of its exclusive rights. The case ultimately proceeded to the High Court of Australia.
The High Court was required to determine whether Centronics' use of the word "Nintendo" on its goods amounted to an infringement of Nintendo's registered trade mark. Specifically, the court had to consider whether the use was "in the course of trade" and whether it was "in relation to goods of the same description" as those for which the trade mark was registered, as stipulated by the relevant trade mark legislation. A further issue was whether Centronics' use was likely to deceive or cause confusion among consumers as to the origin of the goods.
The High Court, in a joint judgment, held that Centronics' use of the trade mark was indeed an infringement. The court reasoned that the use of the word "Nintendo" on the packaging and the goods themselves, even if intended to indicate that the goods were compatible with Nintendo products rather than manufactured by Nintendo, was a use "in the course of trade" and in relation to goods of the same description. The judges applied the principles of trade mark law, emphasizing that the purpose of a trade mark is to indicate the origin of goods and that any use likely to deceive or cause confusion as to origin constitutes infringement. The court found that Centronics' conduct was likely to mislead consumers into believing that the goods were either manufactured by Nintendo or were officially endorsed or approved by Nintendo.
The High Court allowed the appeal, setting aside the orders of the Full Federal Court and remitting the matter to the Federal Court for further proceedings consistent with the High Court's judgment.