Purex Corporation Ltd v Vanguard Trading Co

[1965] HCA 10

HIGH COURT OF AUSTRALIA

Kitto J.

PUREX CORPORATION LTD. v. VANGUARD TRADING CO.

(1965) 112 CLR 532

18 March 1965

Patents

Patents—Whether evidence of infringement—Presumption of continuity—Company—Proof of incorporation by proof of business activities—Proof of incorporation by proof of statement in Register—Patents Act 1952-1960 (Cth), ss. 21*, 29**.

Decision

March 18.
KITTO J. delivered the following written judgment:-
This is an action for infringement of a patent of which the plaintiff claims to be the registered assignee. One question arising on the pleadings is whether the plaintiff is proved to exist as a corporation. It appears from a certificate of the Assistant Commissioner of Patents, admissible in evidence by virtue of s. 29 of the Patents Act 1952-1960 (Cth) (see also the definition of "Commissioner" in s. 6), that on 1st February 1963, an assignment of the patent to Purex Corporation Limited dated 6th November 1962 was registered, and that in the entry of the assignment in the Register the assignee was described, presumably by quotation from the instrument of assignment, as "Purex Corporation Ltd., a corporation organized under the laws of the State of California, place of business at Lakewood, State of California, United States of America". The obvious inference is that an instrument of assignment, appearing to have been executed by a corporation called Purex Corporation Limited, and asserting that such a corporation had in fact been incorporated in California, had been produced to the Commissioner by someone who represented to the Commissioner that a corporation of that name existed and that he had its authority to apply on its behalf for registration of the instrument, and that the Commissioner had been satisfied to register the assignment on the faith of those representations. Under s. 29 (1) the Register is prima facie evidence of all matters required or authorized by the Act to be entered in the Register. By s. 21 the Commissioner is required, on receiving an application, to register the title by a person to a patent by assignment, and, on proof to his satisfaction of the title of the applicant, to cause the applicant to be entered in the Register as the proprietor of the patent. To cause an applicant to be entered in the Register is to cause an entry to be made which necessarily means that the applicant both exists and is entitled to the patent. In my opinion it follows that the Register affords prima facie evidence of the existence of the plaintiff as a corporation. Perhaps the Register is evidence as to the place of incorporation also, but I need not consider that. Even apart from the evidentiary effect of the Register, I think that some evidence of the plaintiff's existence as a corporate body is provided by the fact that acts of a business character have been done in Australia ostensibly by the corporation. I refer to the application to the Commissioner, including the presentation of the instrument of assignment, and the engagement of solicitors and counsel in this country: cf. Reg. v. Langton (1876) 2 QBD 296 ; Reg. v. Waldmann (1883) 1 NZLR (CA) 141 . I find that the plaintiff is a corporation and as such is entitled to maintain this suit as proprietor of the patent. (at p534)

2. The validity of the patent, though denied in the defence, was not made the subject of any particulars and was not disputed at the trial. The only issue to be considered, apart from that with which I have dealt, is the issue of infringement. The infringing acts as alleged in the statement of claim consist of the making, using, offering for sale or selling in Victoria and elsewhere in Australia compositions for deterring the desire for tobacco, the composition being known as "Desista" tablets. It was proved at the trial that shortly before the plaintiff became the registered proprietor of the patent the defendants sold in Australia infringing tablets under the name "Desista", in a particular kind of flat tin box enclosed, together with a leaflet containing letterpress, in a cardboard carton. Both box and carton were of a special design. On the front of each was the word "Desista" printed in a particular fashion on a white oval which itself was superimposed on a dark red background. The words "Smoking deterrent tablets" were printed in white letters on this background, which occupied most of the front of the article. The rest of the front was white and bore the words "An aid to those who want to stop smoking". On each of two of the small sides of the carton appeared the words "Satisfies the nicotine craving". On the back both of the tin box and of the carton there was printing which included a description of the active ingredients as Lobeline Sulphate .45%, Magnesium Oxide and Magnesium Trisilicate. Though the rest of the printing differed as between the two containers, Vanguard Trading Co. was named on each in a manner suggesting that the contents were the product of that firm, and indeed the tin box specifically stated that they were. Then it was proved that after the institution of the action the defendants pursued a course of selling in Australia infringing tablets under the same name in precisely similar containers and with a similar leaflet. There was no direct proof of a sale in the period which alone is in question here, namely the period between the registration of the assignment on 1st February 1963, and the institution of the action on 8th March 1963. But the defendants by their defence admit that without the plaintiff's leave and licence they "have been making, offering for sale and selling in the State of Victoria compositions for deterring the desire for tobacco known as 'Desista' tablets". They did not go into evidence, and the question is whether in all the circumstances an inference arises from the facts I have outlined that the course of making, offering for sale and selling infringing tablets which the defendants followed before that period and the similar course that they followed after that period were in fact portions of one continuous course which they followed not only before and after but also during that period. I am clearly of opinion that that inference arises, and it satisfies me that in the relevant period the defendants were doing exactly what they did both before and afterwards, viz. making, offering for sale and selling tablets in infringement of the plaintiff's patent. (at p535)

3. I therefore make an order in accordance with the claims 1, 2 and 3 in the statement of claim, substituting the word "and" for the word "or" where first occurring in claim 1 and omitting from that claim the words "and any product made". Liberty to the plaintiff to apply in chambers for directions as to the taking of the account mentioned in claim 3 and generally. Defendants to pay the plaintiff's costs of the action up to and including this order. Further consideration and further costs reserved. (at p535)

Orders

Order that the defendants be restrained from manufacturing etc. compositions infringing the plaintiff's letters patent, and that infringing manufactures etc. be delivered up on oath, and that an account be taken of profits etc. and that the amount of such profits etc. be paid to the plaintiff. Liberty to apply in Chambers for directions. Costs of the plaintiff to be paid by the defendants.