Sterimed Technologies International v Schivo Precision Ltd

JurisdictionIreland
JudgeMr. Justice Brian J. McGovern
Judgment Date27 January 2017
Neutral Citation[2017] IEHC 35
CourtHigh Court
Docket Number[2016 No. 10197 P.]
Date27 January 2017

[2017] IEHC 35

THE HIGH COURT

McGovern J.

[2016 No. 10197 P.]

BETWEEN
STERIMED TECHNOLOGIES INTERNATIONAL LIMITED

AND

STERIMED TECHNOLOGIES LIMITED
PLAINTIFFS
AND
SCHIVO PRECISION LIMITED, SEAMUS KILGANNON

AND

SCHIVO GROUP LIMITED
DEFENDANTS

Intellectual Property Rights – Infringement of copyright – O. 56, r. 4(1) of the Rules of the Superior Courts – Injunction – Art. 8(1) of the UNCITRAL Model Law on International Commercial Arbitration – The Arbitration Act 2010

Facts: The plaintiffs sought an injunction and other ancillary reliefs against the defendants for an alleged infringement of the plaintiffs' copyright/design rights in a medical waste disposal system. The defendant, too, applied for an order seeking stay on the present proceedings on the basis that the present dispute was liable to be resolved through arbitration in pursuance of two arbitration clauses contained in the reseller agreement and the manufacturing service and supply (‘MSS’) agreement.

Mr. Justice Brian J. McGovern granted a stay on the present proceedings pending the outcome of the arbitration between the parties. The Court held that the onus was on the defendants to prove the existence of valid arbitration clause. The Court held that the relevant reseller agreement executed between the parties provided for the resolution of any dispute related to contract by means of arbitration in accordance with the International Arbitration Rules. The Court, however, found that disputes relating to obligations surrounding the intellectual property or issues of confidentiality could not be made subject to arbitration as those issues did not survive after the termination of the MSS agreement.

JUDGMENT of Mr. Justice Brian J. McGovern delivered on the 27th day of January, 2017.
1

In these proceedings, the plaintiffs seek an injunction and other relief arising from an alleged infringement of the plaintiffs' copyright and/or design rights in a medical waste disposal system which is the subject of a European Community Trademark no. 011597011 ‘STERIMED’ by the defendants. The plaintiffs also seek various forms of consequential relief including the taking of all accounts and inquiries including an account of the defendants' profits and for damages including aggravated and/or exemplary damages.

2

The defendants have brought a motion to stay the proceedings in favour of arbitration. The application is brought pursuant to O 56, r 4(1) of the Rules of the Superior Courts, as amended, Article 8(1) of the UNCITRAL Model Law on International Commercial Arbitration, the Arbitration Act 2010 and/or under the inherent jurisdiction of the court.

3

The first named plaintiff and the first named defendant are companies registered in Ireland. It is common case that there are a number of agreements which affect the relationship of the parties to the proceedings and some of them include others who are not parties to the proceedings. There is no dispute that two of the agreements contained arbitration clauses. A manufacturing service and supply agreement (the ‘MSS agreement’) was entered into on 30th September, 2013, between the first named plaintiff and the first named defendant. Clause 19.4 of the agreement provided for the arbitration of disputes arising out of the contract. The arbitrator was to be agreed by the parties or, in default, was to be appointed by the President of the Law Society of Ireland. That agreement was subject to Irish law.

4

The other agreement which contained an arbitration clause is the authorised reseller agreement of 1st September, 2014, (‘the reseller agreement’). The first named defendant was not a party to this agreement which was entered into between Innovative Healthcare Distribution LLC (‘IHD’) and the first named plaintiff. Clause 11(h) of the agreement provided for arbitration in Charlotte, North Carolina, in accordance with the International Arbitration Rules of the International Centre for Dispute Resolution.

5

On 8th September, 2014, a further agreement was concluded; namely, a rider to the reseller agreement (‘the rider agreement’). The parties to this agreement were IHD, the first named plaintiff and the first named defendant. The rider agreement incorporated all the terms of the reseller agreement. It also contained a ‘complete agreement clause’ referred to later in para 9 of this judgment.

6

There was a further authorised reseller agreement dated 30th September, 2014, between IHD and the first named plaintiff. The first named defendant is not a party to that agreement and it does not appear to contain an arbitration clause.

7

The MSS agreement was terminated by an agreement in writing called a termination settlement and release agreement dated 30th June, 2015, (the ‘termination agreement’). The parties to the agreement were the first named plaintiff and the first named defendant. Clause 1.1 of the agreement states:-

‘The MSSA is hereby terminated and shall be of no further force or effect from and after the date hereof, except for the undertakings which will remain in full force and effect as specified in s 10 (continuing obligations) of the LOU.’

8

The ‘LOU’ refers to the letter of understanding dated 15th May, 2015, and evidences an arrangement between the first named plaintiff and first named defendant whereby the provisions in the MSS agreement dealing with intellectual property and confidentiality would survive any termination of the MSS agreement. Clause 10 of the LOU provided for continuing obligations and says:-

‘Section 11 (intellectual property) and s 16 (confidentiality) of the [MSS] agreement would survive the termination.’

9

The reseller agreement of 30th September, 2014, post dates the MSS agreement and the authorised reseller agreement and rider to the reseller agreement. Clause 9(f) of the agreement (the complete agreement clause) of 30th September, 2014, is in the following terms:-

‘Complete Agreement

This Agreement, together with the Exhibits hereto, contains the entire Agreement between the Parties and supersedes any prior Agreement or understanding concerning the subject matter...

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8 cases
  • K & J Townmore Construction Ltd v Kildare and Wicklow Education and Training Board
    • Ireland
    • High Court
    • 11 October 2019
    ...these disapplying factors rests on the party who seeks to rely on them (see Sterimed Technologies International v. Schivo Precision Ltd [2017] IEHC 35 (per McGovern J at para. 12, pp. 4-5)).” (Ocean Point, para. 26, p. 12). 44 As I further observed in Ocean Point (at para. 27, p. 13), the I......
  • XPL Engineering Ltd v K & J Townmore Construction Ltd
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    • 11 October 2019
    ...of these disapplying factors rests on the party who seeks to rely on them (see Sterimed Technologies International v Schivo Precision Ltd [2017] IEHC 35 (per McGovern J at para. 12, pp 4-5)).” ( Ocean Point, para. 26, p. 12) 35 As has been consistently held by the Irish courts that where th......
  • Ocean Point Development Company Ltd ((in Receivership)) v Patterson Bannon Architects Ltd
    • Ireland
    • High Court
    • 10 May 2019
    ...these disapplying factors rests on the party who seeks to rely on them (see Sterimed Technologies International v Schivo Precision Ltd [2017] IEHC 35 (per McGovern J at para. 12, pp 27 It has been consistently held by Irish courts that where the requirements of Article 8(1) are met, the co......
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    ...these disapplying factors rests on the party who seeks to rely on them (see Sterimed Technologies International v. Schivo Precision Ltd [2017] IEHC 35 (per McGovern J at para. 12, pp. 4–5)).” 27 . It is also well-established that, where the requirements of Article 8(1) are satisfied, the co......
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