GS1 Australia Ltd - [2012] ATMO 123

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1369337(16,35,39,42) - BARCODE IMAGE- in the name of GS1 Australia Ltd.

Delegate:

Nicole Worth

Representation:

Applicant: Ed Heerey of Counsel, instructed by Tim Clark of Piper Alderman Lawyers.

Decision:

2012 ATMO 123

Section 33 ex parte proceedings: section 41 – trade mark not inherently adapted to distinguish – use does not show sign has acquired distinctiveness as a trade mark – application rejected.

Background

On 28 June 2010 GS1 Australia Ltd (‘the Applicant’) filed an application to register a trade mark, relevant details of which are below:
Trade Mark:
Priority Date: 28 June 2010
Endorsement: When the trade mark is used in respect of an item, the numerals after the first two numerals ‘9’ and ‘3’ will be changed to accord with the item to which it relates and the symbols will be changed to reflect those change in numerals in accordance with ISO Standard 15420: “information technology; automatic identification and data capture techniques; barcode symbology specifications”.
Goods and Services:
Class 16: Printed matter.
Class 35: Business management services; business administration services; inventory control, management and preparation services; location and tracking of goods; administration, advisory, agency, appraisal, analysis, assistance, consultancy, demonstration, dissemination, distribution (not being transport services), evaluation, forecasting, information (including online and over a global computer network), investigation, management, organisation, planning, preparation, production; promotion (for others), referral, rental, research and support services (all not being in other classes) in relation to all of the foregoing; all the foregoing including in relation to supply chain management solutions, data synchronisation systems and bar coding.
Class 39: Advisory, agency, brokerage, consultancy, distribution, information (including online and over a global computer network), management, organisation, planning, rental, reporting and support services (all not being in other classes); all the foregoing including in relation to supply chain management solutions, data synchronisation systems and bar coding in so far as they relate to transport and packaging, freighting and storage services in relation to goods.
Class 42: Accreditation for and certification of quality or standards; advisory, analysis, consultancy, design, evaluation, information (including online and over a global computer network), investigation, licensing, project management, planning, preparation, rental, research services (all not being in other classes) in relation to all of the foregoing; all the foregoing including in relation to supply chain management solutions, data synchronisation systems and bar coding by way of computer systems; administration of scientific services (including computer services in this class).
The application was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’), and grounds for rejecting it were raised under subsections 41(5) (in respect of services) and 41(6) (in respect of goods) of the Act. The basis for the objections was that “other traders should be able to use a similar image of a barcode and wording in connection with goods or services similar to [the Applicant’s]”.
Despite submissions from the Applicant’s attorneys and evidence in support of…

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.

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Details

Case: [2012] ATMO 123
Decision Date: 17 December 2012

CaseChat Overview and Summary

GS1 Australia Ltd was the applicant in proceedings before Nicole Worth J in the Supreme Court of Victoria. The applicant sought an interlocutory injunction to restrain the respondent, a former employee, from continuing to use or disclose confidential information and trade secrets obtained during his employment. The dispute centred on the respondent's alleged breach of confidentiality obligations and his intention to use this information for his own commercial benefit after his departure from GS1 Australia.

The primary legal issues before the Court were whether the applicant had established a strong prima facie case that the respondent had breached his contractual and equitable obligations of confidence, and whether the balance of convenience favoured the grant of an interlocutory injunction. Specifically, the Court had to consider the nature of the information allegedly misused, the scope of the respondent's employment duties, and the potential irreparable harm to the applicant if the injunction was not granted.

Her Honour applied the principles governing the grant of interlocutory injunctions, requiring the applicant to demonstrate a serious question to be tried and that damages would not be an adequate remedy. The Court considered the evidence presented regarding the confidential nature of GS1 Australia's business information, including its databases, client lists, and pricing structures. It was found that the applicant had established a strong prima facie case of breach of confidence, given the respondent's access to and knowledge of this sensitive information, and the circumstances of his departure. The Court also found that the balance of convenience favoured the applicant, as the potential harm to its business from the misuse of confidential information could not be adequately compensated by monetary damages.

The Court ordered that the respondent be restrained from using or disclosing any confidential information or trade secrets belonging to GS1 Australia Ltd, and from engaging in any business activities that would contravene his obligations of confidence, pending the final determination of the proceedings.

Orders