Guttershield v LBI Holdings [2005] NSWSC 113

New South Wales Supreme Court

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

Guttershield Systems Australia Pty Ltd - First Plaintiff/First Cross-Defendant Guttershield Pty Ltd - Second Plaintiff/Second Cross-Defendant PARTIES : 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

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

John Brent & Co - Plaintiffs/Cross-Defendants SOLICITORS : 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, he implies by this submission, sound very much like "property", nor is there anything intellectual about it. In the course of submission Mr Grinter accepted that the word "trademark" has come, however, in common usage, to be part of "intellectual property". There was no submission that in the context of this particular agreement "intellectual property" had any narrower meaning than this common usage. Thus, I do not need to deal further with whether trademarks are capable of falling within "intellectual property" in Clause 3. 6 In my view, trademarks are capable of being "intellectual property developed by the Alliance", within the meaning of Clause 3. The agreement, in Clause 2, sets out the activities in relation to which the Alliance members will cooperate, including: "D. Legal challenges by the Alliance that are required to protect the Alliance members rights due to breach of material supply contracts, infringement of trade marks, patents, intellectual property or common law rights of the Alliance members. E. Research and development of new meshes, fastening systems or any development that will improve the function of the Alliance members businesses within the Alliance. F. All costs associated with the development of contracts, patents, trade marks or any intellectual property developed by the Alliance."