Brian Vincent Maloney & Paul Martin Maloney as Executors of the Estate of Vince Maloney v Vince Maloney (Hayman) Pty Ltd

[2005] ATMO 59

TRADE MARKS ACT 1995

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

Re:Opposition by Brian Vincent Maloney & Paul Martin Maloney as Executors of the Estate of Vince Maloney to registration of trade mark application 927950(25), 949098(25), 949191(25) - VINCE MALONEY, VINCE MALONEY & CO, VINCE MALONEY & CO GENTLEMEN'S OUTFITTERS - filed in the name of Vince Maloney (Hayman) Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Mr John Walsh of Walsh & Associates, Attorneys

Applicant: Mr Christopher Wood of counsel, instructed by Clinch Neville Long, Solicitors

Decision:

1. Section 52 opposition. Grounds of opposition under 42, 43, 44, 58 and 60 not established, provisions in s44(4) applied -registration allowed

2. Costs awarded against opponent

Background

1. The applicant, Vince Maloney (Hayman) Pty Ltd, applied for the following trade marks:

Application Number:

    927950  949098                   949191

Trade Mark:

Vince Maloney

Vince Maloney & Co

Goods:

Class 25  Clothing, footwear, headgear

Priority date:

20 September 2002     3 April 2003            3 April 2003

Acceptance Advertised:

8 May 2003               4 September 2003     4 September 2003

1. The opponent, Brian Vincent Maloney & Paul Martin Maloney as Executors of the Estate of Vince Maloney, filed notices of opposition to the trade marks’ registration on 4 August 2003 (application 927950) and 4 December 2003. Those notices listed grounds of opposition pursuant to sections 42, 43, 44, 58 and 60 of the Trade Marks Act1995 ("the Act") and sought the Registrar’s discretion under section 55. 

2. The opponent duly served and filed evidence in support. The applicant served and filed evidence in answer and the opponent served and filed evidence in reply.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 20 July 2005. Mr John Walsh of Walsh & Associates, Attorneys, represented the opponent. Mr Christopher Wood of counsel, instructed by Clinch Neville Long, Solicitors, represented the applicant.

Evidence

1. Details of the evidence is shown in the following table:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Alexander Peterfreund	18.11.03	Peterfreund
Judith Cook	05.12.03	Cook
Robert Burton	17.12.03	Burton
Gordon Heathcote	16.12.03	Heathcote
Vincent Maloney	08.01.04	Maloney
Turner Grant Allen	17.12.03	Allen
Richard Campbell	14.01.04	Campbell
David Nolan	02.03.04	Nolan
Evidence in Answer
Luciano Azzaro	26.05.04	Azzaro
Patrick Davidson	28.05.04	Davidson
Terrence Sydney Hunt	28.05.04	Hunt
Alasdair Elliott	27.05.04	Elliott
Colin Reid	26.05.04	Reid
Tom Touma	Undated	Touma
Marc Robert Amour	25.05.04	Amour
Richard Francis Edmonds	30.04.04	Edmonds
Cara Fiona Ghassemian	31.05.04	Ghassemian
Heather Hill	04.06.04	Hill
Paul Devine	Undated	Devine
John Cutler	09.06.04	Cutler
Bruce Cowell	28.09.04	Cowell
Andrew David Wallace-Smith	23.06.04	Wallace-Smith
Michael Simmonds	26.07.04	Simmonds
Franco DiFrancesco	26.07.04	DiFrancesco
Michael Conn	23.07.04	Conn
Frank Muscat	23.07.04	Muscat
Declarant	Date declared	Exhibits	Known As
Maureen Patton	17.09.04	Annexes A to E	Patton
Peter So	17.09.04	Annexes A to B	So
Jon Hawley	23.09.04	Annexure A	Hawley
Craig O'Donovan	24.09.04	Annexes A to B	O'Donovan
Arthur Allen King	30.09.04	Annexes A to Z, AA to UU & AAK1	King
Paul Blanket	30.09.04	Annexes A to C	Blanket
Peter Michael Pascalis	30.09.04	Pascalis

1. In general terms, the evidence for both parties follows a similar pattern: a narrative from the opponent/officer of the applicant along with numerous trade declarations that attest to which of the opponent or applicant the particular deponent associates as being in charge of the business “Vince Maloney & Co”.

2. Because of the nature of Trade Mark Office opposition hearings, with formal rules of evidence not being applicable and evidence rarely being tested by way of cross-examination, it is often difficult for a delegate of the Registrar to be confident of making findings of fact equivalent to those found by judicial tribunals.

3. However, while a number of issues that arose in the course of the opposition process might be more properly dealt with in court, I am satisfied that I have sufficient material with which to deal with the limited issues that are within the jurisdiction granted to me, as a delegate of the Registrar, by the Act.

4. I am satisfied that Mr Vince Maloney commenced working in the retail clothing industry in 1946, trading under the business name Murphy and Maloney.  He was associated with the manufacture and sale of high-quality clothing and in particular menswear.

5. In 1950 Mr Maloney established the company of Vince Maloney Pty Limited, trading as Vince Maloney.  This company operated from premises in Marrickville (NSW) from 1950 to 1978.

6. In 1971 the company opened a second menswear store in Burwood (NSW), which was run by employees of the company.

7. In 1973, Mr Maloney incorporated a new company, Vince Maloney (City) Pty Limited, which traded as Vince Maloney from premises in the Centrepoint building in Sydney (“City”).

8. In 1975 the Burwood store was closed and its employees transferred to the City store.

9. Also in 1975, Mr Maloney agreed to a profit-sharing arrangement in the profits of the City store with Turner Allen and Peter Pascalis, these gentlemen being long-term employees of Vince Maloney & Co. 

10. The 1977, Vince Maloney Holdings Pty Limited was incorporated.  In 1988 this company changed its name to that of the applicant, Vince Maloney (Hayman) Pty Limited.

11. In 1978, the Marrickville store was closed and Peter Pascalis transferred from there to the City store.

12. Vince Maloney (Hayman) Pty Limited commenced trading under that name for the purposes of operating a store on Hayman Island.  The Hayman Island store closed in 1991, but the company remained in existence.

13. In 1992, Vince Maloney Pty Limited was deregistered.  In 1993 the applicant company obtained the business names Vince Maloney and Vince Maloney & Co, and applied for and obtained registration for trade mark 612888 as follows:

1. In June 1993, a store trading under the name of Vince Maloney & Co was established in Elizabeth Street Sydney.

2. In 1994, Vince Maloney (City) Pty Limited ceased trading at Centrepoint and was later wound up in 1996. 

3. On 5 October 2000, trade mark registration 612888 expired due to a failure to pay the renewal fee.  This was allegedly due to an employee of the applicant failing to bring to the attention of the officers of the applicant a letter written by its solicitors advising of the requirement to renew the trade mark.  There is no evidence that the applicant abandoned the trade mark.

4. In February 2001, the opponent gave notice of his resignation as a director of the applicant.  This became effective on 28 February 2002.

5. In April 2002, Vince Maloney instructed his attorneys to apply for registration of trade mark 911082, substantially the same as a 612888, has shown below:

1. This trade mark was cited against the applicant during examination of the opposed marks; however, the applicant was able to established honest concurrent user of its trade marks.  I find this surprising, since there seems to be no evidence that Mr Maloney actually used the mark.  There was, as I shall discuss below, prior use of trade marks that protect the applicant.

Onus

1. In Kowa Company Ltd v N V Organon [2005] FCA 1282, Lander J states at [138]:

   I do not think that the decision in Registrar of Trademarks v Woolworths [(1999) 93 FCR 365] is ambiguous. French J said that there is a presumption of registrability; that Jafferjee no longer is relevant; that the Court must apply the same legal criteria as the Registrar; that because of the obligation imposed by s 33 the application must be accepted unless the Court is satisfied that the application has not been made in accordance with the Act or there are grounds for rejecting it; and that the decision to reject must be made upon positive satisfaction that the ground has been made out

2. At [141] his Honour continued:

   Therefore, I would proceed on the basis that the onus lies on the respondent to establish the grounds of opposition it relies upon and that I should not uphold those grounds unless I am satisfied that the trade mark should clearly not be registered

1. I am bound by decisions of the Federal Court, and proceed on the basis that the onus is on the opponent to establish its grounds, and that I should not uphold a ground unless I am positively satisfied that it has been made out.

Preliminary observations and conclusions

1. While it is true that Mr Moloney was the originator of and driving force behind the menswear businesses bearing his name, since 1950 he apparently did so through various companies. A company is a corporation. The principle behind incorporation is that acts of the corporation are in no sense the acts of its members. The company is a distinct legal entity apart from its members.  The company, and not the members, owns the property and assets of the business.

2. Thus, during the period from the formation in 1950 of the first company bearing his name until his resignation as a director of the applicant in 2001/2002, all the powers of the company he exercised were in his capacity of an officer of the company rather than in his own right.

3. It must therefore be the case that before 2001, the applicant and opponent were in effect the same entity.  While it is true that the man, Vincent Maloney, was the human face of the company and the initial reason for its success and reputation, such success and reputation belonged to the company.

4. There is no evidence for me to be clearly satisfied that all property of the business was other than property of the company.

Grounds of Opposition

Section 42 (b): use of trade mark contrary to law

1. Following the decision of Madgwick J in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24, the Registrar is obliged, when assessing whether use would be contrary to law under s.42(b), to take into account the operation of laws and legislation other than the Trade Marks Act 1995.

2. Here, however, the opponent has provided no evidence or submissions in respect of this ground  and I dismiss it.

Section 43: a connotation within the trade mark

1. Section 43 provides:

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

1. This section does not depend on the existence of a conflicting trade mark.  Connotation refers to that which is implied within the mark itself, as a secondary implied or associated meaning: Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644 and confirmed in Winton Shire Council v Lomas (2002) 56 IPR 72.

2. TGI Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 confirms that the connotation must be in the applicant's trade mark itself. The connotation cannot be determined as a result of external considerations, such as reputation or use.

3. Here again, however, the opponent has provided no evidence or submissions in respect of this ground  and I dismiss it.

Section 44: Substantially identical/deceptively similar prior registrations

1. To establish the s.44 ground, the opponent must establish all of the following:

• At the priority date there was a substantially identical or deceptively similar trade mark application or registration on the Australian Register

• in respect of similar goods or closely related services

• in the name of a person other than the applicant.

1. The test to be applied under s.44 may be expressed as follows:

   'assuming use by the owner of the cited mark in a normal and fair manner of their mark in respect of any of the goods or services covered by the registration, is the Registrar satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of goods covered by the proposed registration.'

   Re Smith Hayden & Co’s Application (1946) 63 RPC 97, 101;

2. It was common ground that the applicant’s trade marks were deceptively similar to the opponent’s registration, thus section 44 is made out. However, I am satisfied by both the Maloney and King declarations that the applicant has continuously used its trade marks in respect of similar goods for a period that begins before the priority date of the opponent’s registration and ending on the priority date for the registration of the applicant’s trade marks.

3. Therefore I must apply the provisions of section 44(4) of the Act and not reject the application because of the existence of 911082.

Section 58: Applicant not owner of trade mark

1. This section of the legislation reads:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

1. It is now well established law that, in order to succeed under this ground of opposition the opponent must establish three factors. These are:

   (i) that the respective trade marks of applicant and opponent be either identical or substantially identical (Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375, (1994) AIPC ¶91-049, (1994) 120 ALR 495);

   (ii) that the respective goods of both parties be the 'same kind of thing' (Re Hicks' Trade Mark (1897) 22 VLR 636; 3 ALR 75); and

   (iii) that the opponent has the earlier claim to ownership based on use prior to both the application to register and actual use of the mark by the applicant (Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413 and Re: Hicks's Trade Mark, supra, at 639).

2. It is clear that the earliest claim to ownership based on use is that of the company.  Therefore, I dismiss this ground of opposition.

Section 60: Prior reputation

1. To satisfy s.60, the opponent has the burden of establishing the following elements:

¨    a pre-existing trade mark;

¨    substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

¨    the acquisition of a reputation in Australia by the pre-existing trade mark; and

¨    a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

1. The only pre-existing trade mark that is owned by the opponent and can be relied upon under this ground is registration 911082, shown above.  However, it is essentially the same mark that was owned by the applicant between 1993 and 2000.

2. There is no evidence of any sales, marketing or promotion of the opponent’s mark independent of the applicant.  Any reputation that the mark has is that accrued by the applicant.  Therefore, I dismiss this ground of opposition.

Conclusion

1. The opponent has not made out any of its grounds of opposition, thus the opposition fails.

2. The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. The applicant sought its costs.  The general rule in awarding costs is that costs are usually awarded against the unsuccessful party, unless there is some conduct on the part of the successful party that would justify a departure from the general rule.

2. I see no reason why costs should not follow the general rule. I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh

Hearing Officer

Trade Marks Hearings

31 October 2005