Brystie, Inc v Turtle Wax Inc

[1995] ATMO 50

TRADE MARKS ACT 1955

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

Re:      Trade mark applications numbers A590646(25) and A590647(24) in the name of Brystie Inc. and opposition thereto in the name of Turtle Wax Inc.

Trade mark applications A590646(25) and A590647(24) were advertised for acceptance in the Official Journal of Trade Marks  on 8 April 1993.  Each of the marks consists of the words TURTLE FUR.   The applicant is a Vermont company called Brystie Inc. and it is located in Vermont in the United Sates of America.

On 5 July 1993, Turtle Wax Inc, an Illinios company located in Chicago in the United States of America, applied for a three months extension on the time allowed to oppose these marks.  The extension on each of the trade mark applications was allowed.

The notices of opposition were then lodged on 7 October 1993.

The three months allowed under regulation 43, for service of the evidence to support Turtle Wax Inc.’s opposition thus ran to 7 January 1994.  Turtle Wax Inc. sought an additional three months which was allowed, and a subsequent three months which was disputed.  This disputed request came to a hearing, and was decided in Turtle Wax Inc.’s favour.  Following this, three further applications, each for three months, were filed and allowed.  At the end of this, the time for serving the evidence in support of the opposition had lengthened to a total of 18 months.  When Turtle Wax Inc. applied yet again, the applicant, Brystie Inc., objected.  This second disputed extension was scheduled for  hearing but this time, on 3 July 1995, Turtle Wax Inc. withdrew its application for the additional time.  The position was then that Turtle Wax Inc. was out of time for serving evidence to support its opposition, and none had been served.

On 7 July 1995, the agent for Brystie Inc. requested a hearing be set down to determine the opposition, and to consider an application for an award of costs.

A hearing was thus scheduled for the Sydney session in October 1995, and on 18 October 1995, the matter came before me.  The applicant was represented by Ms Melinda Upton of Corrs Chambers Westgarth, solicitors.  The opponent was not represented but, as the hearing was on the point of commencing, its agent, Ms Annette Teckemeier of Baker & McKenzie, solicitors and attorneys,  rang to advise me that Turtle Wax Inc. had given instruction to withdraw opposition on both marks.  These instructions had accordingly been forwarded to the Trade Marks Office in Canberra. 

The hearing then proceeded, and Ms Upton made brief representations on the matter of the costs.  She drew my attention to the chronology of the opposition as set out in some detail in written submissions prepared by her office.  These submissions were filed in support of Brystie Inc.’s objection to the final (and ultimately withdrawn) extension application.  This history shows that through 1994 and up to April 1995, negotiations were under way to reach a settlement for world wide arrangements between Turtle Wax Inc. and Brystie Inc.. These negotiations finally broke down in April 1995.  As a result, Brystie Inc. filed its objection to the last of the extension requests and, subsequently asked for a hearing.

Ms Upton referred me to the delay and inconvenience occasioned to Brystie Inc. by the drawn out nature of the opposition.  This inconvenience, she said, had been compounded by a last minute proposal from Turtle Wax Inc. which had not reached her office till the evening prior to the hearing.  She said that Brystie Inc. had rejected this proposal and, in consideration of the inconvenience  caused by this uncompleted opposition, requested that an order for costs be awarded to it.

Decision

It is clearly the case that this opposition has long delayed the progress of these trade mark applications.  However, it is also clear that the allowance of the extensions in the time for serving the evidence was sought and allowed on the grounds that negotiations were under way.  Brystie Inc. was a party to those negotiations and to some degree at least, accommodated the continued extensions.

However, the final point is that Turtle Wax Inc. has withdrawn its opposition and has made no representation in relation to Brystie Inc.’s application for an order for costs.  Where an opposition is withdrawn, the other party is normally regarded as successful:  Dagger Brand (1923) 18 AOJP 48; Mac’s Cyder Pty. Ltd. -v- Eticon Inc. (1969) 39 AOJP 412 at 413.There is no reason here to depart from that approach and therefore, as I advised Ms Upton at the hearings, I find in favour of the trade mark applicant and I award it its costs.

Helen R. Hardie

DeputyRegistrar

26 October, 1995