White SW Computer Law
Intellectual Property, Information Technology & Telecommunications Lawyers
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White SW Computer Law Intellectual Property, Information Technology & Telecommunications Newsletter - February 1998

The importance of reliance in misleading and deceptive conduct cases

In the matter of The Builders Warehouse Group Ltd t/as Campbells Hardware and Timber v Multinail Australia Pty Ltd, Multinail was contracted by Campbells to supply nail plates and connectors, computer hardware and software and training in relation to the manufacture of timber roof trusses for a fixed period.

Prior to the expiration of the fixed term, Campbells entered into an agreement with a competitor of Multinail for the supply of, amongst other things, truss products.

Campbells then sought to have its agreement with Multinail set aside due to alleged misleading and deceptive conduct engaged in by Multinail.

Whilst the Court found that there was some misleading and deceptive conduct in the marketing materials supplied by Multinail it found the Campbells did not rely upon those representations at the time it entered into the agreement.

Accordingly, Campbells claim was dismissed.

This case emphases the need for actual reliance upon the misrepresentation in order to be successful in such a claim.

First in, first served - Domain Name Allocation

The allocation of domain names around the world tends to be on a first come, first served basis. It is possible that there will be more than one business or individual interested in owning certain easy to remember domain names.

In the UK matter of Pitman Training Ltd and Anor v Nominet UK and Anor, two businesses which originated from a break up of the Pitman business both claimed they had the right to own the domain name “pitman.co.uk”.

Pearson was the first to register the domain name as its own.

During the time when Pearson's web site was being developed, unknown to it, its registration was transferred to PTL.

Both PTL and Pearson spent money advertising their web sites.

When Pearson realised its domain name registration had been transferred, it persuaded Nominet, the body responsible for registering domain names in the UK to reassign the domain name to Pearson.

PTL commenced legal proceedings against both Pearson and Nominet to regain control of the domain name.

PTL was unsuccessful as not only had it been the second party to apply for the domain name, it was also bound by reason of the original break up and sale agreement to only use the word pitman in conjunction with the word training, unlike Pearson which was able to use the word pitman alone.

In Australia, you may apply for a domain name which has some relationship with your company or business name or which is a combination of two or more common words.

Without a pre-existing registered trade mark and/or substantial market recognition of your company or business name it may be very difficult to have a domain name reallocated to you should another party register it before you do.

Anton Piller Orders

When a party to litigation can show a strong case that there is a real possibility that an opposing party may destroy material in its possession to hinder a claim being successfully being made against it, an application may be made to the Court, without notice to the other party, for an Anton Piller Order to be issued.

In the Western Australian matter of Interest Research Bureau Pty Ltd v Interest Recount Pty Ltd and Others, IRB obtained an Anton Piller order against IR based on its belief that IR, a company established by ex-employees of IRB, was in possession of and was using an illegal copy of computer software owned by IRB.

An Anton Piller Order allows the applicant to enter specified premises and seize specified items.

In a subsequent application, after the search, it was suggested that the computer program in question was not owned by IRB nor was IR using that program.

The Court found that it was unnecessary to rule on this point as there had been material found in IR's possession which was within the scope of the order and which belonged to IRB including records of IRB's clients and copies of IRB “form letters”.

The Court ordered, amongst other things, that although the Anton Piller Order should be discharged, due to the nature of the terms of the order, IR and the other three defendants, all ex-employees of IRB, should deliver up to IRB all copies of materials owned by IRB, and that IR be restrained from soliciting or taking work, until trial or further order, from any client or former client of IRB in respect of whom IR had possession of copies of the relevant IRB records.

If somebody arrives at your doorstep to execute an Anton Piller order it is your right to have, and very important that you seek, legal advice immediately.

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