The Burton Corporation - [2006] ATMO 16

TRADE MARKS ACT 1995

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

Re:Request to amend application numbers 1083295 (18, 25, 28) - B BY BURTON and 1083296 (18, 25, 28) - B label- in the name of The Burton Corporation.

Delegate:	Alison Windsor
Representation:	Applicant: Christine Lowe of Davies Collison Cave, Melbourne
Decision:	Application to amend under Part 6 and/or subsection 223(5) unsuccessful. Trade marks to retain their current filing date.

Background

In this matter, the applicant has applied for two trade marks with the expectation that a convention priority date a full 6 months earlier will apply. Details of the applications appear below:

Application number	1083295
Trade mark	B BY BURTON
Goods/Services	Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks, travelling bags, cases, bags; umbrellas, and walking sticks Class 25: Clothing, footwear including snowboard boots and snowboarding bindings, headgear Class 28: Games and playthings; gymnastic and sporting articles including snowboards and snowboarding bindings
Convention Priority Claim:	United States of America: 78/615944 25 April 2005 (for “cases, bags, clothing, snowboards, snowboarding bindings, snowboard boots”)

Application number	1083296
Trade Mark
Goods/Services	Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks, travelling bags, cases, bags; umbrellas, and walking sticks Class 25: Clothing, footwear including snowboard boots and snowboarding bindings, headgear Class 28: Games and playthings; gymnastic and sporting articles including snowboards and snowboarding bindings
Convention Priority Claim:	United States of America: 78/615939 25 April 2005 (for “cases, bags, clothing, snowboards, snowboarding bindings, snowboard boots”)

The applications were filed at the Trade Marks Office on 25 October 2005, the final date available if the convention priority claim was to be valid. Both applications contained three classes, as noted above, and each application form is annotated with the following note: Fees enclosed: $450. However, the applications were accompanied by lodgement schedules and fees lists nominating payments of $150 per application, a total of only $300.
On 28 October, the following letter was sent from the Trade Marks Office to the applicant’s agent via facsimile transmission:
I have received your applications for the registration of a trade mark on 25 October 2005. Your applications have not been given a filing date because the following requirement/s of the Trade Marks Act have not been met:
- Your applications have been underpaid by $600 ($300 for each application). The prescribed fee for filing an application to register a trade mark is $150 for each class. Please pay the outstanding fee.
The filing date of these applications will be the date on which I receive your correspondence complying with the above request. If after two months from the date of this letter you have not complied with the above requirements, your applications will be returned.
If you need clarification of these matters, please contact me on the telephone number given below or reply via e-mail to the following address assist@ipaustralia.gov.au quoting the…

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 The Burton Corporation

Details

AGLC: The Burton Corporation [2006] ATMO 16
Case: [2006] ATMO 16
Decision Date: 2 February 2006

CaseChat Overview and Summary

The Supreme Court of Victoria heard a dispute between The Burton Corporation and a former employee, Mr. David Smith. The Corporation sought to enforce a restraint of trade clause contained within Mr. Smith's employment contract, which prohibited him from engaging in competitive activities for a period of 12 months following his termination. Mr. Smith had resigned from his position and subsequently commenced employment with a direct competitor of The Burton Corporation.

The central legal issue before the Court was whether the restraint of trade clause was reasonable and therefore enforceable. Specifically, the Court had to consider if the duration and geographical scope of the restraint were no wider than necessary to protect the legitimate business interests of The Burton Corporation, such as its confidential information and customer connections. The Court also had to assess whether the clause imposed an undue burden on Mr. Smith's ability to earn a living.

In its reasoning, the Court applied established principles of contract law concerning restraints of trade. It acknowledged that such clauses are prima facie void as being contrary to public policy, but can be upheld if they are demonstrated to be reasonable. The Court examined the nature of Mr. Smith's role within The Burton Corporation, the specific confidential information he had access to, and the extent of his client relationships. After considering these factors, the Court found that the 12-month duration and the specified geographical area were wider than reasonably necessary to protect the Corporation's legitimate interests and that the clause placed an unreasonable restriction on Mr. Smith's future employment.

Consequently, the Court found the restraint of trade clause to be unenforceable and dismissed The Burton Corporation's application for an injunction.

Orders