John Harold Harding v Fathom Knowledge Network Inc - [2002] ATMO 20

TRADE MARKS ACT 1995

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

Re: Opposition by JOHN HAROLD HARDING to applications under section 92 of the Act by FATHOM KNOWLEDGE NETWORK INC to remove trade mark number 245151(16) in the name of JOHN HAROLD HARDING

Background
Trade mark registration 245151 is registered in the name of John Harold Harding ("the opponent"). That registration has effect from 30 December 1970. It is for the trade mark fathom, registered in class 16 of the International (Nice) Classification of Goods and Services for the following goods:

Magazines, printed matter, newspapers, periodicals, books, photographs, stationery, instructional and teaching material, type and cliches

On 27 June 2000, Fathom Knowledge Network Inc, a United States company incorporated in Delaware, of New York City, United States of America ("the applicant") filed an application for removal of the trade mark from the Register, on the basis of non-use in the period commencing three years and one month before the date of filing. This period ("the relevant period") is 27 May 1997 to 27 May 2000. The opponent filed a Notice of Opposition to the application on 13 October 2000.

The applicant alleged that it was a "person aggrieved" within the meaning of the Trade Marks Act 1995 ("the Act") and relied on section 92(4)(b) of the Act. The applicant alleged that the opponent had not used the trade mark in good faith during the relevant period.

In turn, the opponent alleged in the Notice of Opposition that the trade mark was in regular use by Australian Seafari Pty Limited and by the opponent himself.

The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Canberra on 7 November 2001. The applicant was represented by Ms Joanne Martin of F.B. Rice and Co, who appeared by telephone. The opponent appeared in person.

Legislation

Section 92 of the Act relevantly provides as follows:

92 Application for removal of trade mark from Register etc.

(1)A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.
(2)The application:
(a)must be in accordance with the regulations; and
(b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Note:For prescribed court see section 190.

(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a)that, on the day on which the application for the registration of the trade mark was…

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: [2002] ATMO 20
Decision Date: 28 February 2002

CaseChat Overview and Summary

The Federal Court of Australia heard an appeal by John Harold Harding against Fathom Knowledge Network Inc. The dispute concerned the enforceability of an employment agreement and the validity of certain restrictive covenants contained within it. Mr Harding sought to have these covenants declared void and unenforceable.

The primary legal issues before the Court were whether the restrictive covenants, which purported to prevent Mr Harding from engaging in competitive activities and soliciting clients and employees for a period after his employment ceased, were reasonable and therefore enforceable. This required the Court to consider the scope and duration of the restraints, the legitimate business interests the employer sought to protect, and the public interest.

The Court applied established principles of contract law concerning restraints of trade. It assessed whether the covenants went no further than was reasonably necessary to protect Fathom Knowledge Network Inc.'s proprietary interests, such as confidential information and customer connections. The Court considered the specific nature of the business, Mr Harding's role within it, and the geographic and temporal scope of the restrictions. The Court found that the covenants, as drafted, were wider than necessary to protect the employer's legitimate business interests and were therefore void as unreasonable restraints of trade.

Consequently, the Court ordered that the restrictive covenants within the employment agreement were unenforceable.

Orders