Phil Maney Pies (Aust.) Pty Limited v Cambridge Bakehouse Pty Limited

[1997] ATMO 71

TRADE MARKS ACT 1995

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

RE:Opposition by CAMBRIDGE BAKEHOUSE PTY LIMITED to the registration of trade mark applications 678086 and 678087 in the name of PHIL MANEY PIES (AUST) PTY LIMITED.

Background

On 15 November, 1995 PHIL MANEY PIES (AUST) PTY LIMITED filed two applications both in respect of “pies and pastry products” in Class 30. The composite word and device trade marks depicted on the application forms are shown below:

 

678086  678087

Both trade marks were accepted with the endorsement “The representation appearing in the trade mark is that of Phil Maney” and were advertised in the Official Journal of 26 April 1996.

Notices of opposition to both acceptances were filed on 19 July 1996. The grounds upon which the oppositions were based involved: (1) Section 58 - that the applicant is not the owner of the trade mark, (2) Section 59 - that the applicant has not used nor is intending to use the trade mark, (3) that at the time of making the application the Director of the applicant was employed by the opponent and was therefore in breach of an employer/employee agreement with the opponent, (4) Section 43 - that use of the trade marks by the applicant would cause deception or confusion because the trade marks are being used by the opponent and (5) the application forms themselves were defective due to their being filled out incorrectly.

The evidence

The evidence in support was served by 15 November 1996 and consisted of a Statutory Declaration dated 14 November 1996 from Mr. Peter John Godfrey, a Director of the opponent, which contained annexures “A” to “G” (the Godfrey declaration). The annexures themselves consisted of:

A            a deed of agreement dated 23 December 1992 of a sale of assets of Smithton Country      Bakehouse Pty Limited to Phil Maney Pies Pty Limited and which also contained restricting covenants on the business operations of Phillip Louis Maney and Alex Bob     Cijffers.

B            a set of invoices dated between 11 June 1993 and 2 September 1993 to Phil Maney        Pies issued from the business entity G3.

C            an agreement dated 17 May 1994 between the parties Phillip Louis Maney and Leanne    Maney as directors of Smithton Country Bakehouse and Phillip Louis Maney as a      director of Phil Maney Pies Pty Limited and the parties Quandt Investments Limited      and Alex Bob Cijffers.

D            an unsigned letter dated 10 November 1994 on The Cambridge Bakehouse letterhead      purportedly confirming the appointment of Mr. Maney as the Director of Sales and Marketing of The Cambridge Bakehouse.

E            a notice of termination dated 1 November 1995 from Triple M Management, terminating their services with The Cambridge Bakehouse and signed by Phil Maney as proprietor.

F             a copy of a letter dated 25 June 1996 from solicitors Opat, Goldsmith & Goldsmith Pty   written on behalf of Mr. Phillip Maney to Page Seager, the legal representatives for the              opponent. This letter offers that Phillip Maney will not use “the trade marks” and also     requires an undertaking from the opponent not to use by picture or graphical               representation the applicant’s face on any promotional literature.

G            a copy of an agreement undated but, by inference from its contents, executed some        time in 1995 prior to 31 October, selling the assets of Phil Maney Pies Pty Ltd, Quality Cakes Pty Ltd and Smithton Country Bakehouse Pty Ltd to Cambridge Bakehouse Pty    Ltd.

The evidence in answer was served by 15 May 1997 and consisted of a Statutory Declaration dated 13 May 1997 from Mr. Phillip Louis Maney, the sole director of the applicant, which contained annexures “PM1” to “PM12” (the Maney declaration). These twelve annexures consisted of:

PM1        a copy of an award made to Phil Maney dated 20 June 1990 at “The Great Aussie          Meat Pie Competition”.

PM2        representations of two pie wrappers, for which Mr. Phillip Maney, in his declaration,      claims he allowed use by Smithton Country Bakehouse and Phil Maney Pies Pty Ltd of              his name and image. These wrappers contain representations of the present     applications with minor changes to the placement of the words “Get your Phil” and    “Tasmania’s Original Real Beef Pie”.

PM3        two unsigned management contracts dated 5 May 1994 and 1 January 1995    purportedly made between Bel Verde Securities and Triple M Management awarding contracts to the latter for work in connection with Phil Maney Pies Pty Ltd. (for 1994)     and The Cambridge Bakehouse (for 1995).

PM4        a copy of a letter dated 11 June 1996 from Page Seager written on behalf of Smithton      Country Bakehouse Pty Ltd and Phil Maney Pies Pty Ltd to Mr. P. Maney claiming    ownership of the two present trade marks for which Phil Maney Pies (Aust) Pty Ltd       made application on 15 November 1995.

PM5        a copy of a letter dated 25 June 1996 from Opat, Goldsmith & Goldsmith Pty written      on behalf of Mr. Phillip Maney to Page Seager in answer to the letter of 11 June.

PM6        a copy of a letter dated 8 July 1996 from Opat, Goldsmith & Goldsmith Pty written on    behalf of Mr. Phillip Maney to Page Seager requesting a response to the letter of 25      June.

PM7        a copy of a letter dated 11 July 1996 from The Cambridge Bakehouse to Opat,               Goldsmith & Goldsmith Pty claiming ownership of the name “Phil Maney Pies” but              disclaiming any rights in the picture or graphical representation of Mr. Phillip Maney.

PM8        a copy of a letter dated 6 August 1996 from Opat, Goldsmith & Goldsmith Pty written    on behalf of Mr. Phillip Maney to The Cambridge Bakehouse challenging the contents            of the letter of 11 July.

PM9.       a copy of a letter dated 6 August 1996 from Opat, Goldsmith & Goldsmith Pty written    on behalf of Mr. Phillip Maney to Page Seager stating that the letters of PM7 and PM8            above are attached, and requesting information as to whether The Cambridge Bakehouse are still their clients.

PM10      a copy of a letter dated 12 August 1996 from Page Seager to Opat, Goldsmith &            Goldsmith Pty stating that they have no instructions at present from The Cambridge Bakehouse.

PM11      a copy of a letter dated 21 August 1996 from Opat, Goldsmith & Goldsmith Pty            written on behalf of Mr. Phillip Maney to The Cambridge Bakehouse making further        rebuttal of the comments in the letters of 11 June and 11 July and seeking a copy of the   evidence on which the opponent intended to rely in the opposition matters.

PM12      a copy of a letter dated 2 October 1996 from Opat, Goldsmith & Goldsmith Pty             written on behalf of Mr. Phillip Maney to The Cambridge Bakehouse indicating that         the applicant intends to defend the opposition to the acceptance of these applications.

Following completion of both the evidence in support of the notices of opposition and the evidence in answer the applicant made request for a decision on the written record.

Discussion

There were five separate grounds raised by the opponent in the notices of opposition which I intend to deal with in the same order as contained in those notices.

The first ground raised in the notices of opposition arguably concerns the crux of this opposition - ownership of the trade marks. The opponent has made the claim that the trade marks are the property of The Cambridge Bakehouse Pty Ltd (Cambridge). This claim is made by virtue of the assertion, in the first instance, that ownership of the trade mark 678087, for the trade mark YOU’VE GOTTA TRY A PHIL MANEY PIE with the photographic representation of PHILLIP MANEY EATING A PIE, passed from Smithton Country Bakehouse Pty Ltd (Smithton) to Phil Maney Pies Pty Ltd (PMP) as indicated at annexure “A” of the Godfrey declaration, then was assigned to Quandt Investments Ltd (Quandt) or assigned at the direction of Quandt as indicated at annexure “C” of the Godfrey declaration, then followed sale of PMP, Quality Cakes Pty Ltd and Smithton to Cambridge.

The applicant for its part claims that the trade mark was the property of Mr. Phillip Maney and was used by the businesses involved under licence. Eventually a company set up with Mr. Maney as the sole director, Phil Maney Pies (Aust) Pty Ltd, made application for the trade mark.

The competing claims for ownership of this trade mark from both the applicant and the opponent, concern themselves with the passage or otherwise of the ownership. Historically, it appears that the trade mark was first used by Smithton when Mr. Phillip Maney and his wife Leanne were the sole directors. The claim made by Mr. Maney stated that the mark was used under licence. At the time when Smithton was purchased by PMP only the “plant and equipment” is mentioned in the deed at annexure “A” of the Godfrey declaration. All items listed are physical assets and the purchase price amounted to $145 168. 00. The trade mark used by Smithton was not mentioned in the agreement, nor, for that matter was any other intellectual property. Moreover, nowhere in the evidence can it be found that the trade mark used by Smithton was ever owned by that entity. This directs me to conclude that irrespective of the later chain of purchases and/or assignments of assets, ownership of the trade mark for which application was made under number 678087 never passed out of the hands of Mr. Maney. From the evidence submitted, there was no direct definition of the intellectual property rights with the sale of Smithton’s assets to PMP. The only proper conclusion to draw in the circumstances is that the trade mark bearing Mr Maney’s name and representation would remain his property. The fact that no proof exists in the evidence to ever show ownership of the trade mark by Smithton and, further, that no proof exists in the evidence that any intellectual property was sold by Smithton to PMP, leads to a failure in the opponent’s assertion in the “first link in the chain” to show ultimate ownership rests with Cambridge.

The second application, that made under number 678086, for the words THE PHIL MANEY PIE COMPANY in an annulus together with the words GET YOUR PHIL and TASMANIA’S ORIGINAL REAL BEEF PIE and a device of AN OVAL in which a representation of PHILLIP MANEY EATING A PIE is depicted, has a slightly different history. I will only detail the differences between 678087 and 678086 as they are of interest in this opposition matter.

According to the Maney declaration the second trade mark was developed after PMP had purchased Smithton but the use was under a licence granted by Mr. Maney to PMP. For its part, the opponent has submitted that PMP paid approximately $15 000.00 to G3, a business entity offering art and design services, “for the design of the trade mark”. On this basis, the opponent has claimed that PMP was the initial owner of the trade mark which is the subject of 678086 and the rights were then assigned to Cambridge in an agreement dated 1 November 1995.

I can find no evidence that PMP ever had ownership of this second trade mark. In fact, the opponent submitted invoices from G3, a business entity which, it has claimed in the notice of opposition, to be responsible for creating the second mark for a consideration of $15 000. 00 paid by PMP. Nowhere, however, in these invoices from G3, is categorical statement made to show exactly what service has been supplied to PMP. They do not materially support the case for the opponent because the evidence, as submitted, is merely circumstantial in supporting the opponent’s claims. Was the “creative marketing proposal” mentioned in these invoices for the development of a trade mark or for something else? The only reasonably specific item listed is “Phil Maney School Pies Leaflet”. Given, however, that the business was named Phil Maney Pies Pty Limited, this reference is not conclusive in establishing reference to ownership of either of the trade marks for which application has been made, or for that matter, for any specific item of intellectual property. Effectively, this means that from the time at which the second trade mark was used by PMP no clear change in direction of ownership has been shown from the arrangements for the first used mark.

Additionally, no clear indication has been shown by either party on the relative use over time of the two trade marks. Were they, in fact, used in tandem? Did the mark shown in application 678086 take over from 678087 at some particular point in time? In the absence of this detail I am left to conclude that the arrangements for 678086 were the same as for 678087. This being the case, the opponent’s evidence has not displaced the claim of ownership for 678086 of the applicant as set out in the above discussion in relation to 678087.

In a further statement made by the opponent at the first ground of opposition in the notice of opposition, the claim is made that, by agreement in writing dated 1 November 1995, the property in the trade marks was sold by Phil Maney Pies Pty Ltd to Cambridge.

The only possible evidence submitted to support such a contention could be annexure “G” of the Godfrey declaration which was undated in 1995 (but some time before 31 October when the document states that “the vendors and purchaser shall carry out a stocktake at the close of business”). This document does detail a sale of assets by PMP to Cambridge which includes “title and interest in any intellectual or industrial property in the name ‘Phil Maney Pies’ ”. However, as discussed earlier, the actual rights in the present trade mark ownership have not been shown to reside with PMP but with Mr. Phillip Maney. As such, PMP could not assign or sell title in the property it did not own.

In relation to this first ground of opposition I find that the trade mark applicant’s rights to ownership of the trade marks have not been displaced.

The second ground relied on Section 59 of the Act and asserted that the applicant is not using the trade marks, nor will use the trade marks.

The applicant for these trade marks is Phil Maney Pies (Aust.) Pty Ltd. The application forms clearly assert that the applicant is either using or intending to use the marks. The only possible relevant document in the evidence to support a claim that the trade marks were not used or not intended to be used by the applicant, lies in the copy of the letter of 25 June 1996 and submitted at annexure “F” of the Godfrey declaration. This letter was written on behalf of Mr. Maney by his legal representative at the solicitor firm of Opat, Goldsmith & Goldsmith Pty. In part, comments are made that: (1) Mr Maney is prepared to undertake not to use his trade mark, (2) these trade marks have not been used to date, (3) allegations that Mr. Maney has been using the trade marks are false and (4) Mr. Maney is prepared not to use the trade marks in the future.

Of course, use or non-use of the trade marks by Mr. Maney does not affect a statement claiming use by the applicant, Phil Maney Pies (Aust.) Pty Ltd. The fact that Mr. Maney is prepared to undertake not to use the marks is not binding on Phil Maney Pies (Aust.) Pty Ltd. The second statement above, that “these trade marks have not been used to date” flies in the face of evidence from both parties, which clearly shows that use has occurred. There may be some difference of opinion about who has used the trade marks but they have had use according to the evidence from both applicant and opponent. However, I do not find that this letter, at annexure “F” of the Godfrey declaration, makes any statement which affects the statement of use of the trade marks made by the applicant, Phil Maney Pies (Aust.) Pty Ltd. The applicant is free to use the trade marks and also free to authorise use by another party.

The very fact of application by the applicant is, prima facie, sufficient to shift the onus of proof that there is no intention to use the trade marks to the opponent. I find, then, that the opponent is not successful on this ground of opposition.

The third ground of opposition asserts that as at the application date for these trade marks, 14 November 1995, that Mr. Maney was an employee of the opponent and was in breach of an employee agreement.

On reviewing the evidence from both parties I note that the only relevant documents submitted in this regard are unsigned. Annexure “D” of the Godfrey declaration consisted of an unsigned letter dated 10 November 1994 purportedly confirming Mr. Maney’s appointment to a position of employment at Cambridge and annexure “PM 3” of the Maney declaration consisted of two unsigned management contracts dated 5 May 1994 and 1 January 1995 purportedly awarding contracts to Triple M Management for work offered by PMP and Cambridge. In addition, Mr. Maney has denied that he ever entered into the “employee agreement” of 10 November 1994 as asserted by the opponent.

From this evidence it is not possible to determine the exact nature of the working relationship of Mr. Maney with the opponent. I should, however, note in passing that even if Mr. Maney was in the employ of Cambridge at the relevant date, being 10 November 1994, then as Mr. Maney was the owner of the trade marks (see the first ground of opposition above) he would not have been prevented from making application unless he had clearly contracted that he would not do so. I must also observe that the present case is even further removed by the fact that the applicant for these trade marks is not Mr. Maney but a company of which he is the sole director. Hence, on this ground I must also find in favour of the applicant.

The fourth ground relied upon introduces opposition in terms of Section 43 of the Act, that because of use by the opponent, use of the trade marks by the applicant would be likely to deceive or cause confusion.

In order to succeed with this ground of opposition, the opponent is first obliged to provide evidence of some reputation in use of the trade marks itself. Such evidence would normally include the amount of use, shown in dollar terms, of sales in connection with the trade marks and the value, shown in dollar terms, of advertising using the trade marks. No evidence of such reputation was submitted. It would appear then that the “use” claimed by the opponent is the use of the trade marks in connection with the chain of purchases and assignments of business interests, through Smithton, PMP, Quandt and Cambridge. However, as the ownership of the trade marks did not reside with these entities, (see the discussion in connection with the first ground of opposition), the use cannot be considered to give reputation to the opponent. On this basis I find that the ground under Section 43 has not been established and the opposition on this ground must fail.

The final ground cited in the notice of opposition relies on the application form for each application being invalidated by being incorrectly filled out.

The claimed defective entry was in connection with item 4B on the standard application form available from AIPO Offices for the 1955 Act. This item requested a statement of user, from the applicant, of the use of the trade mark for which the application was being made. The form indicates to “tick one box only” to indicate either use of the trade mark by the owner (applicant) or to state that use of the trade mark would NOT be by the owner. If use of the trade mark was not going to be by the owner but by either (1) other users under the control of the owner or (2) use by a company about to be formed, then a tick was to be made in one of the two circles found below the second rectangular box. Mr. Maney had, in fact, ticked the first box to indicate that the owner would use the trade mark, then left the second rectangular box vacant but ticked the circle to indicate use would be by other users under the control of the applicant. Certainly, in commercial and legal terms there is nothing preventing use by the applicant AND use by a user under the control of the applicant. Such commercial arrangements are made every day between various parties and can exist over extremely long periods of time. Whether or not failure to fill in the form correctly is fatal can be shown from a consideration of the following information.

Firstly, the reason such an item was included in the application form stemmed from Regulations 8(1) and 10(1) under the Trade Marks Act 1955 as follows:

Statement as to use, or proposed use, of trade mark

8(1) An applicant for the registration of a  trade mark in respect of two or more different goods, or all the goods included in one of the prescribed classes of goods, shall furnish in support of his application a written statement indicating that the applicant uses or proposes to use presently the trade mark in relation to all the goods specified in the application or the goods included in the class of goods specified in the application.

Applications under section 45

10(1) Where an applicant applies for the registration of a trade mark which he does not use or propose to use but applies for the registration of the trade mark in pursuance of section 45 of the Act, the applicant shall furnish with his application a statement setting out the grounds which the applicant claims should satisfy the Registrar that the trade mark should be registered in pursuance of that section.

A primary effect of these regulations was to ensure that each trade mark added to the Register was either in use or going to be used in the near future. Such a requirement of the repealed Act was not unreasonable, in view of the fact that the Register was set up to indicate actual commercial usage of trade marks and not as a forum for the mere displaying of property for which individuals or bodies claimed ownership rights. Against this background, it is of note that in the circumstance where an applicant ticked BOTH boxes on the application form, it was accepted Office practice, in dealing with these situations under the 1955 Act, that the examiner would simply ignore the second tick, because it was sufficient to know that the owner was either presently using the trade mark or intended to do so in the near future. Whether or not another party would use the trade mark under a licensing arrangement was superfluous to Office requirements. The information available from a tick of either of the circles only became of importance if the first rectangular box was NOT ticked. In the present instance, these two applications were pending as at 1 January 1996, the date from which the Trade Marks Act 1995 took effect. This later Act does not have a requirement for a statement of user of a trade mark. The examiners manual indicates that the actual act of making an application “will generally be taken as sufficient to indicate use or intended use of the trade mark”. As these applications were accepted under the 1995 Act the item at 4B of the standard application form for the 1955 Act is also superfluous to requirements. I also note, for the record, that the examiner in the first instance did note the fact that the circle under the second box had been ticked, but had ignored the circumstance of a licensed user in line with Office practice in this situation as I have mentioned earlier. From the foregoing discussion I cannot find that these applications are prima facie defective in any sense which would invalidate the acceptance of the trade marks.

On this ground, then, I find that the opposition also fails.

Conclusion

From the foregoing, I have found that the opposition fails on all five grounds stated in the notices of opposition for the trade mark applications 678086 and 678087. Therefore, as the delegate of the Registrar, I dismiss these oppositions and direct that, in the absence of any appeal, both applications may proceed to registration on the payment of the appropriate fees. I make no award as to costs.

Don Nancarrow
Senior Examiner
21 November 1997.