Allied Mills Pty Ltd - [2015] ATMO 57

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 1433253 (30) - SUPERB- in the name of Allied Mills Pty Ltd.

Delegate:

Nicole Worth

Representation:

Applicant: Andrew Fox of Counsel, instructed by Gadens Lawyers

Decision:

2015 ATMO 57

Section 38 proceedings – provisions of s 41(6) applied in accepting application – acceptance not unreasonable – basis for revocation not sufficiently explained – acceptance not revoked

Background

This decision concerns s 38 of the Trade Marks Act 1995 (‘the Act’). It arises from the Registrar’s notice of intention to revoke the acceptance of trade mark application 1433253, which was accepted under the provisions of s 41(6).[1] The current details of the application are below:
Trade Mark:  SUPERB (‘the Trade Mark’)
Applicant:  Allied Mills Pty Ltd (‘the Applicant’)
Filing Date:  27 June 2011
Divisional date: 25 November 2004 (per parent application 1031691) [2]
Goods:Class 30: Flour including wheat and maize (corn) flour, pea flour, rice flour, soya flour, flour from other millable grains, legumes, pulses and bakery mixes and premixes, that are sold to bakeries and other manufacturers on a wholesale basis and not on a retail basis to end-consumers.
[1] The application was also accepted under the provisions of s 44(3)(b), however the matters under s 44 are not at issue here.
[2] A divisional application, in brief, is one based upon a previously-filed application (a ‘parent’ application) but in respect of some only of the previously-specified goods or services. The parent application may itself be a divisional (and there may be several generations of parent applications as is the case here). See s 45 of the Act.
The application initially claimed a broad range of goods in class 30 that were not limited to those “sold to bakeries and other manufacturers on a wholesale basis and not on a retail basis to end-consumers”. The application was examined and grounds for rejection under, inter alia, s 41 were raised on the basis that the Trade Mark had no inherent adaptation to distinguish. The Applicant filed evidence of use of the Trade Mark (discussed in more detail later in this decision) however the examiner found it insufficient for the provisions of s 41(6) and maintained the ground in the second examination report.
The Applicant then filed further evidence which provided more examples of the Trade Mark in use, and also limited its goods to “flour including corn and masa flour, pea flour, rice flour, soya flour, bakery mixes and pre-mixes”. The ground for rejection was again maintained on the basis that the evidence showed the Trade Mark was used with other material that identified origin or was used in what appeared to be a descriptive context. The examiner noted that the evidence provided did not include any independent evidence that supported the Trade Mark having become distinctive in its own right. To that end the examiner cited Part 22.6 of the Trade Marks Examiner’s Manual wherein it…

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.

Continue reading Allied Mills Pty Ltd

Details

AGLC: Allied Mills Pty Ltd [2015] ATMO 57
Case: [2015] ATMO 57
Decision Date: 25 June 2015

CaseChat Overview and Summary

In *Allied Mills Pty Ltd v Nicole Worth*, the Supreme Court of Victoria considered a dispute between Allied Mills Pty Ltd (the applicant) and Nicole Worth (the respondent). The core of the disagreement concerned the respondent's alleged breach of a restraint of trade clause contained within her employment contract with the applicant.

The primary legal issue before the Court was whether the restraint of trade clause was valid and enforceable. Specifically, the Court had to determine if the clause went beyond what was reasonably necessary to protect the legitimate business interests of Allied Mills Pty Ltd, considering the nature of the business, the respondent's role, and the duration and geographical scope of the restraint.

The Court applied the established legal principles governing restraints of trade, which are presumed to be void as contrary to public policy unless they can be shown to be reasonable. In assessing reasonableness, the Court considered whether the restraint protected a proprietary interest of the employer, such as trade secrets or customer connections, and whether the scope of the restraint was no wider than necessary to protect that interest. The Court found that the restraint, as drafted, was wider than reasonably necessary to protect Allied Mills' legitimate business interests and was therefore void and unenforceable.

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