Jolly Swagmen Pty Ltd v Brenda Lomas

[2002] ATMO 90

TRADE MARKS ACT 1995

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

Re:Objection by WM PRODUCTIONS PTY LTD to an extension of time by BRENDA LOMAS for the service of evidence in answer to Oppositions by WM PRODUCTIONS PTY LTD to applications by BRENDA LOMAS under section 92 of the Act to remove trade mark numbers 218783, 228232(32, 33) - WALTZING MATILDA.

Background

WM Productions Pty Ltd ("WMP") owns two registrations of the trade mark WALTZING MATILDA.  Those registrations are in classes 32 and 33.  The trade mark is registered for, respectively, all goods in class 32 (in general terms, beers, soft drinks and cordials) and "wines, spirits and liqueurs" in class 33. 

Brenda Lomas has applied to remove these trade mark registrations under the provisions of s 92 of the Trade Marks Act 1995.  She alleges that the mark has not been used in trade, for the relevant goods, during the three year period ending 28 May 2000.

WMP has opposed this removal, on the grounds that

• Ms Lomas does not have the necessary standing ("person aggrieved") to bring the application and

• the more conventional grounds relating to alleged use, circumstances that prevented use etc

In opposing removal of its trade marks, WMP now bears the initial onus, in terms of s 100 of the Act, of showing use of the trade mark for the relevant goods during the relevant period, or otherwise advancing its case.  In support of this it has filed evidence in support of the opposition and served a copy on Ms Lomas.  Ms Lomas, for her part, did not serve evidence in answer within the statutory three-month period following this.  Her solicitor, Mr Spence, requested a total of six additional months for this purpose, and the extensions were agreed to by the Registrar.  At the end of this time, in the lack of any such evidence, WMP requested that the opposition be determined. 

It is common ground that the standing of Ms Lomas to seek removal of the trade marks is under serious challenge.  Had matters gone to a hearing as they then stood, the delegate would probably have found that WMP had no case to answer.

Belatedly, Ms Lomas has sought, via her solicitor, an extension of time of five additional months for serving evidence in answer to the opposition.  The extension, in an opposition conducted under Part 9 of the Trade Mark Regulations, is to be assessed under regulation 5.15.  I may not grant the extension unless, in all the circumstances of the case, I am satisfied that it is appropriate to do so.

WMP objects to the extension and has elected, as it is entitled, to make its representations against the extension at a hearing before the Registrar of Trade Marks.  I conducted that hearing and am to decide the matter under delegation from the registrar.  At the hearing both sides made representations by telephone.  Peter Fisher, trade mark attorney, of Fisher Adams Kelly, represented WMP.  Anthony Franklin of counsel, instructed by John Spence and Associates, represented Ms Lomas.

Underlying facts

On behalf of his client, Mr Spence admits, in his own declaration dated 10 April 2002, certain facts.  It will be simplest to set out the relevant ones, before setting out the principal arguments that Mr Fisher, on behalf of WMP, and Mr Franklin, on behalf of Ms Lomas, applied to that assemblage.

Ms Lomas is involved in another dispute concerning the trade mark WALTZING MATILDA.  In that other dispute, she herself has applied to register that trade mark in her own name.  Her application, covering, in simple terms, foodstuffs, advertising and restaurant services, has been opposed, by three separate entities.  Two of these are the Winton Shire Council and the Waltzing Matilda Centre Ltd.  At the Trade Marks Office their oppositions failed but, on appeal, they met with success.  Spender J has decided that Ms Lomas's application cannot be registered for all of the services she has specified.  See Winton Shire Council v Lomas [2002] FCA 288. It is Ms Lomas's firm intention to seek leave to appeal that decision once Spender J makes final orders.

Ms Lomas intends "in particular" to set up a restaurant franchising business for the conduct, by third parties, of a chain of theme restaurants.  Ms Lomas also declares that she intends to provide the goods and services specified in application 749100, the subject of the other opposition.  Finally she declares that the existence of the registrations under attack for non-use "will prevent my offering for sale and selling beverages under and by reference to the trade mark WALTZING MATILDA".

While all this was happening, Mr Spence was aware of the need to file, in the current non-use matter, his client's evidence in answer, supporting her standing as a person aggrieved.  He requested and obtained two extensions of time for that purpose, up to 16 November last year. 

Elsewhere, a third strand of events was developing, involving the trade mark registration under attack in the current matter.  That registration stands, as I have said, in the name of WMP.  However, at the time Ms Lomas filed the removal application, the registration was in the name of a now-defunct company, Jolly Swagmen Pty Ltd ("Jolly Swagmen").  Jolly Swagmen is a company with which Ms Lomas has already crossed swords.  It failed, in its own separate proceeding, to impede the registration of the trade mark application filed by Ms Lomas[1].  Jolly Swagmen also filed opposition to the removal of the currently-attacked trade mark, the proceeding that WMP has now inherited. 

[1] Jolly Swagmen was the third opponent to this registration.  Its opposition was entirely separate from that of Winton Shire Council and the Waltzing Matilda Centre.

WMP has negotiated, from the liquidator of Jolly Swagmen, an assignment of the trade mark in question, and has, in doing so, acquired the standing of opponent under s 96A of the Act.  Mr Spence, however, has been unaware of these transactions.  He declares that it was not until October 2001 that he became aware of any activity involving Jolly Swagmen.  On 13 October he became aware that an administrator had been appointed.  Mr Spence declares that he did not learn of the transfer of the trade mark to WMP until much later, in March 2002, when he was advised of it by the Trade Marks Office.  His statement about this is unchallenged by evidence, despite Mr Fisher's speculations at the hearing.  It is also consistent with the date of the company search that is in evidence and that he declares he ordered on receiving this advice.

From his declaration, Mr Spence was previously of the view that the present opposition should simply have "died with the company Jolly Swagmen Pty Ltd".  I think, taking his declaration as a whole, and having considered the argument put to me by Mr Franklin on behalf of Ms Lomas, that Mr Spence simply erred in prioritising the matter.  As Mr Franklin argued, it was one of low priority and low risk to the client, and was something that Mr Spence, having put off, ultimately overlooked.

Mr Spence's declaration seeks to cast the failure to serve evidence in answer as an error.  It was not, however, a simple slip, but the result of what Mr Spence asserts was a view that, in the circumstances, his firm was entitled to take.  As an "omission", I conclude that it was simply one of deliberate, though explainable, inaction.

The evidence in answer has now been prepared.  It has been filed at the Trade Marks Office and the required copy has been served on the attorneys for WMP.  If the present extension of time is allowed, that service will be validated.  If not, Ms Lomas's standing as a person aggrieved, now under challenge by WMP, will be unsupported and her removal applications will be permanently disabled.

That, understandably, is a situation that WMP wishes to bring about.  It had, before the now-disputed extension of time was requested, already requested a hearing of the opposition itself. 

Mr Fisher, at the hearing, was very critical of the approach taken by Ms Lomas and Mr Spence to the conduct of the non-use opposition.  Mr Fisher pointed out that, since October last year, Mr Spence had been aware that the non-use opposition matter was not as moribund as it appeared.  He argued, and I accept, that with additional prudence the company search could have been done earlier.  However, I think that this is simply an observation that is easy to make after the event.  Mr Spence and his client were on the periphery of the dealings between Jolly Swagmen and WMP.  While Mr Spence might have delved deeper into the status of Jolly Swagmen, the fact is that he did not.

Mr Fisher argued, moreover, that the failure to serve evidence in answer at an earlier date could not be characterised as an error or omission in any sense that suggested accidental oversight.  He was also very critical of the grounds for extension based on the alleged relevance of the other opposition.

I think there is one sense in which the other opposition is pivotal in the present matter.  I set out the goods specified in Ms Lomas's own pending trade mark application, the subject of the other opposition:

Class 29

Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; foodstuffs and prepared foods included in this class;

Class 30 

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery; biscuits and cakes; ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice; foodstuffs and prepared foods included in this class;

Class 31

Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt;

Class 35

Services in class 35 namely, advertising; business management and administration; accountancy; franchising and licensing services including the appointment of franchises and licensees and the conduct and management of same; retail and wholesale services relating to acquisition, supply and sale of foodstuffs, beverages and groceries; statistical analysis; information surveys and marketing research; publicity press releases and supervision of promotional campaigns; consultancy services in regard to the above services;

Class 42

Services in class 42 namely, the establishment, operation and conduct of outlets, venues and facilities for the supplying and provision of meals and refreshments, including restaurants, cafes, food outlets, meal rooms, dining venues, eateries, cafeterias, canteens, snack bars, takeaway stores and fast-food outlets; providing foodstuffs and beverages to the said outlets, venues and facilities; catering services; advisory and consultancy services pertaining to the said services.

By her own evidence, which she now seeks to introduce here, these are the goods and the services in which she intends to trade.

Mr Franklin submitted that I have a broad discretion in these matters.  He conceded that I must not grant the extension unless a proper case is made, and noted that a "terse but useful" statement of principle is set out in The Nasdaq Stock Market Inc v Ozdaq Research Pty Ltd [2002]ATMO 26: 

The criteria to be applied, when deciding whether an extension of time to serve evidence in an opposition proceeding is appropriate, have been established in cases such as Vangedal Nielsenand Others v Smith (Commissioner of Patents) and Another (1980) 33 ALR 144 and Lyons (trading as Mitty's Authorised Newsagency) v Registrar of Trade Marks (1983) 1 IPR 416. In Australian Olympic Committee v Brennan (1994) 30 IPR 44 Deputy Registrar Hardie set out those criteria as the:

·amount of time so far allowed

·reasons put forward for needing the extension of time

·seriousness of the opposition

·relative inconvenience to the parties, and the

·public interest.

He also noted that it was relevant to consider the nature of the evidence sought to be filed late.  In a submission that echoes, I think appropriately, the assessment of further evidence in Oxon Italia SpA's application, [1981] FSR 408, he argued that there was no question that the proposed evidence was improper, extraneous, irrelevant or open to serious challenge.

Finally, Mr Franklin stressed those parts of the evidence that show that the delay, and ultimately the failure to serve the evidence, was in no wise attributable to Ms Lomas, who had entrusted and instructed her solicitor to do what was necessary.  At no time had she instructed Mr Spence not to proceed.  Quite to the contrary, as Mr Spence's declaration shows that he was instructed, in April 2001, to file the necessary evidence.  I infer from the Spence declaration that it was simply his own decision and, ultimately, inaction, that allowed the months to pass, to November 2001.  At that time, the twice-extended period for evidence in answer came to an end.

Decision

I accept, in general, the approach that Mr Franklin commended to me.  However, I would add one reservation here.  I note that under the 1995 legislation there is a general shift of balance away from the public interest and towards the balance of competing traders' interests, though the protection of consumers is still relevant.  (See French J, Registrar of Trade Marks v Woolworths 1999 FCA 1020, 45 IPR 411, at 47.) This current matter is a non-use application. Thus, of all the applications brought before the Registrar of Trade Marks, there is probably less public interest than usual in the substantiation of an applicant's case.

Ms Lomas has taken it on herself to attack existing registrations, has had little to impede her supporting her standing as a person aggrieved and has already had more than ample time to do so.  Her evidence now can only be cast as "too little too late", and I will set out, below, the reasons why I am unable to grant the time to introduce it.

Spender J, in the other opposition, considered the goods specified in the registrations that Ms Lomas now attacks.  He concluded that they were neither closely related to the services specified by Ms Lomas, nor of the same description as the goods she has specified, for the purposes of the other opposition.  I respectfully agree with Spender J on those questions, though I must allow, here, for the fact that Ms Lomas has, at the date of this decision, sought leave to appeal that decision.  It may be that Winton Shire Council and the Waltzing Matilda Centre will, if leave is granted, become entitled to challenge that finding.  However, Spender J's finding, at the moment, goes against the standing of Ms Lomas as a person aggrieved.  The finding is one, moreover, which she herself has previously advocated. 

The appeal on the other opposition is for the future.  For the moment, that part of the horizon is clouded by doubt and speculation.  Nor should it be said that speculations by Ms Lomas, now, about its possible grounds and outcomes, justify her standing as a person aggrieved when she filed the opposed removal applications.

However, three things remain clear:  Ms Lomas has not at any stage sought to register her trade mark in the classes involved in the present non-use dispute; nor has she at any stage said that she intends to trade, under the trade mark in question, in cordials, beer, wine, spirits or liqueurs; nor has she sought to explain why the existence of these registrations is any other sort of practical or business disadvantage to her. 

Much has been said, by the courts over time, about the crucial requirement for standing as a person aggrieved.  I appreciate Mr Franklin's argument that matters before the registrar should, in principle, be decided on a full disclosure of relevant material.  However, now that the material is to hand, it speaks for itself.  I am left with nothing more than the impression that Ms Lomas sees the removal matter as a prudent tidying-up of the register, desirable as a matter of general principle but little more than a follow-on to her main concerns.  Those are the theatre-restaurant business and her own pending application for registration.

Both of those things are caught up in the other opposition.  Mr Franklin argued, at the hearing, that it was natural to allow the court matter before Spender J to be the arbiter of progress.  That simply is not good enough.  Ms Lomas is engaged in the serious business of seeking to remove a trade mark from the register.  Her own priorities cannot be given absolute precedence over the expectations of the owner of the attacked registrations.

To belatedly allow in the present material would be to facilitate what has regularly been called, by delegates such as myself, a mere casual regard for opposition time frames.  Nor can it be said that Ms Lomas can be entirely insulated from the decision of Mr Spence to give the non-use matter such a low priority.  It was allowed to drag on too long for this insulation to be effective.  Ms Lomas, having instructed her solicitor to proceed with this simple matter, must accept some of the responsibility for both the failure to make progress, and the unimpressive nature of the evidence to date.

Conversely, in its evidence in support of its opposition, WMP has shown that it has a serious commercial intention to use the trade mark, which it has arranged to purchase.  Further delay would be a clear detriment to WMP, which I would not inflict unless driven by a more meritorious case than Ms Lomas has so far established.

I am therefore not satisfied, in terms of regulation 5.15(3)(c), that the extension is appropriate.  I accordingly refuse to grant it.

As to costs, I order Ms Lomas to pay the costs of WMP to the extent set out in the scale.  To avoid any doubt or confusion, I confirm that WMP is not entitled, in this extension of time matter, to any costs for the receipt and perusal of evidence in support of the extension, and that the costs are to be taxed as a single matter only.

Terry Williams
Hearing Officer
Trade Marks Hearings
16 August 2002