Bacchus Marsh Concentrated Milk Company Limited (in Liquidation) v Joseph Nathan and Company Limited [1919] HCA 18

Bacchus Marsh Concentrated Milk Company Limited (in Liquidation) v Joseph Nathan and Company Limited [1919] HCA 18

On the construction of the contract and the evidence, the contract did not operate after the expiry of the patents to prevent the vendor from manufacturing, importing into or selling in Australia the substance known as 'Glaxo.' The purchaser acquired no right or title to the goodwill of the vendor's business in Australia nor to the use of the trade mark 'Glaxo.' The restraint of trade in clause 7 was not effective beyond the patent period and, in any case, was unreasonable, as it was not ancillary to the sale of goodwill or a secret process. The trade mark 'Glaxo' was not assigned with the contract. Rectification was refused as there was no mutual mistake as to the recorded agreement.

Parties
Appellant/defendant: The Bacchus Marsh Concentrated Milk Company Limited (in Liquidation) and another; Respondent/plaintiff: Joseph Nathan & Company Limited
Jurisdiction
Australia
Judgment Date
12 May 1919
Procedural Posture
Appeal / On Appeal From the Supreme Court of Victoria
Outcome
Appeal dismissed; orders below varied.
Legal Topics
Assignment of Patents, Goodwill in Business, Contracts in Restraint of Trade, Rectification of Contracts, Trade Mark Ownership, Sale of Business
Contract Law Intellectual Property Law Trade Marks Restraint of Trade Assignment of Patents Goodwill in Business Contracts in Restraint of Trade Rectification of Contracts +2 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 21 Party arguments 2 Amounts and remedies 2
Sign in to unlock

Parties

The Bacchus Marsh Concentrated Milk Company Limited (in Liquidation) and another

Appellant/defendant

Joseph Nathan & Company Limited

Respondent/plaintiff

Procedural Posture

Appeal / On Appeal From the Supreme Court of Victoria

Legal Issues

  1. 1 Whether the contract between the parties operated to prevent the vendor from manufacturing or importing into or selling in Australia the substance known as 'Glaxo' after the expiration of the patents;
  2. 2 Whether the purchaser had any right or title to the goodwill of the vendor's business in Australia or to the use of the trade mark 'Glaxo';
  3. 3 Whether the restraint imposed by the contract was invalid as unlawful and unreasonable;

Ratio Decidendi

On the construction of the contract and the evidence, the contract did not operate after the expiry of the patents to prevent the vendor from manufacturing, importing into or selling in Australia the substance known as 'Glaxo.' The purchaser acquired no right or title to the goodwill of the vendor's business in Australia nor to the use of the trade mark 'Glaxo.' The restraint of trade in clause 7 was not effective beyond the patent period and, in any case, was unreasonable, as it was not ancillary to the sale of goodwill or a secret process. The trade mark 'Glaxo' was not assigned with the contract. Rectification was refused as there was no mutual mistake as to the recorded agreement.

Court Disposition

Appeal dismissed; orders below varied.

Orders

  • Declaration that the contract did not operate to prevent the plaintiff after expiry of the patents from manufacturing, importing or selling in Australia dried milk or 'Glaxo';
  • Declaration that the defendant has no right or title to the goodwill of the plaintiff's business in Australia or to the use of the trade mark 'Glaxo'