The Waltzing Matilda Centre Limited v Jolly Swagman Pty Ltd

[2001] ATMO 93

TRADE MARKS ACT 1995

DECISION OF THE REGISTRAR OF TRADE MARKS WITH REASONS

ReOpposition by The Waltzing Matilda Centre Limited to trade mark application number 768214 – WALTZING MATILDA – filed in the name of Jolly Swagmen Pty Ltd and objection by Jolly Swagmen Pty Ltd to the scheduling of this opposition for hearing

Trade mark application number 768214 was filed on 23 July 1998 in the name of Jolly Swagmen Pty Ltd (Jolly Swagmen), a company of Rotherdam Street, Kangaroo Point, Brisbane, Queensland.  768214 is an application to register the word mark waltzing matilda.  The application was examined and was advertised on 12 August 1999 as having been accepted for registration for goods and services reading as follows:

Class 9
Cinematographic goods in this class, films, motion pictures, slides, videos, videotapes, cassettes, recording discs, CDs, audio/visual tapes, cassettes, and discs; computer programs

Class 41
Film production, production of motion pictures, videotapes, CDs, cassettes, records, radio and television programmes, production of shows; publication of books, texts; movie studios; rental of motion pictures, videos, cinema-films; entertainment services.  

Within the statutory time allowed in respect of s52 of the Trade Marks Act 1995, the Waltzing Matilda Centre Limited (Waltzing Matilda Centre) of 50 Ellderslie Street, Winton, Queensland, filed notice that it opposed registration of this trade mark.  There followed a fairly usual sequence of extensions of time and filing of evidence.  Following service of evidence in support, and evidence in answer, Waltzing Matilda Centre gave notice that, in accordance with regulation 5.13 of the Trade Marks Regulations 1995, it did not intend to serve evidence in reply. The provisions of regulation 5.14 then came into operation and, on 22 June 2001, as allowed per regulation 5.14(2)(c), Waltzing Matilda Centre requested the opposition matter be set down for hearing. 

A series of letters were thereafter exchanged between the parties and the Trade Marks Office, the burden being that while the opponent, Waltzing Matilda Centre, wished to have the hearing scheduled as soon as possible, the applicant, Jolly Swagmen, was not prepared for, and did not wish, the hearing to proceed.  In essence, Jolly Swagmen sought a suspension of the opposition and Waltzing Matilda Centre sought to have the matter heard.  

Regulation 5.16 provides the Registrar with authority to give a direction in relation to the procedure in opposition proceedings, so long as that direction is not inconsistent with the Regulations.  A direction must not be given, however, unless:

·    the Registrar is reasonably satisfied that the parties have been notified of the proposed direction;

·    the parties have been given reasonable opportunity to make representations concerning the proposed direction; and

·    the Registrar is reasonably satisfied that the proposed direction is appropriate. 

Representations in respect of a proposed direction may be made in writing, or at a hearing, or by such other means as the Registrar reasonably allows. 

In view of the disagreement between the parties as to whether the opposition should be suspended, or the substantive matter set down for a hearing, it was appropriate to resolve the question by means of a supplementary hearing per regulation 5.16.  The Registrar therefore notified the parties that a time for this hearing was appointed. 

The hearing took place in Brisbane on 30 August 2001.  The opponent, Waltzing Matilda Centre, was represented by Mr Andrew Musgrave of counsel, assisted by Ms Sophie Johnson of Deacons, Lawyers of Brisbane.  The applicant, Jolly Swagmen, was represented by Mr Peter C. Fisher of the patent and trade marks attorney firm of Fisher Adams Kelly, also of Brisbane.   Mr Fisher was assisted by Ms Khrystyna Misko. 

The Facts of the Situation

Subsequent to Waltzing Matilda Centre's request for a hearing, correspondence from Fisher Adams Kelly (per Mr Fisher) acting on behalf of Jolly Swagmen advised the Trade Marks Office, that on 20 June 2001, an Administrator had been appointed to Jolly Swagmen. The firm of Fisher Adams Kelly, said Mr Fisher, could not take instruction from the Administrator until a review of the Jolly Swagmen company was complete. Mr Fisher's correspondence alleges undue and opportunistic haste on the part of Waltzing Matilda Centre in its request for a hearing. Further, he asserted that if a hearing is conducted before Jolly Swagmen's affairs are examined and properly considered (by, I gather, Fisher Adams Kelly), this would amount to a gross denial of natural justice.

These concerns were duly notified to Waltzing Matilda Centre via their agent, Deacons.  Deacons disagreed with Mr Fisher's views. There followed correspondence with the Trade Marks Office dealing with submissions from both sides.  Jolly Swagmen’s circumstances and the chronology of events following appointment of the Administrators are comprehensively recited by Mr Fisher in a declaration of 23 August 2001.  This declaration was considered at some length in the course of the hearing.  I summarise Mr Fisher’s account as follows. 

• In June 2001, Cole Downey, chartered accountants and insolvency specialists, advised Fisher Adams Kelly, as creditors, that James Patrick Downey and Robert M.H.Cole had been appointed Administrators for Jolly Swagmen, and that Mr Cole had taken control of the company.  (Exhibit PCF - 1)

• Fisher Adams Kelly, however, had taken all instruction in the affairs of Jolly Swagmen from a Mr Robert Raymond.  Mr Raymond is described as a major shareholder. In (or after) July 2001, subsequent to the appointment of the Administrators, Mr Raymond advised Mr Fisher (in phone conversations) that he intended to vigorously contest any disposition of the intellectual property rights held by Jolly Swagmen.

• By letter of 9 July 2001, and in light of their position as creditors, Fisher Adams Kelly advised Mr Cole that it had care of a number of Jolly Swagmen's trade mark matters; that the opposed subject trade mark application was “probably the most important” of the Jolly Swagmen trade marks; and that they were advocating delays in the hearing of this opposition.  The delay was purportedly required so that Mr Fisher could consider "the matter".   On equal date, Fisher Adams Kelly protested to the Registrar that the Waltzing Matilda Centre's request for a hearing in the substantive matters was “unduly opportunistic” and “inappropriate”.  (Exhibit PCF - 3 and Exhibit PCF - 4)

• On 11 July 2001, Fisher Adams Kelly received notice from the Administrator advising the proposed disposition of Jolly Swagmen's assets to a creditor, namely, WM Productions Pty Ltd. In the alternative Jolly Swagmen could be placed in liquidation. (Exhibit PCF - 5)

• Fisher Adams Kelly then advised the Trade Marks Office and Administrator that what it now terms a hiatus in ownership had developed, and protested that if a hearing were to go ahead, the beneficial owner of the trade marks would not be represented. (Exhibit PCF - 7)

• On 2 August 2001, Fisher Adams Kelly received communication from Porter Davies, lawyers, acting on behalf of Mr Raymond.  Porter Davies advised that writs for injunctive relief were being prepared against the Administrators of Jolly Swagmen, and against Jolly Swagmen's creditors.  Fisher Adams Kelly is described as a creditor. Mr Fisher says that he interpreted this as a threat of legal action against his firm.   (Exhibit PCF - 9)

• By letter dated 8 August 2001, Deacons notified Fisher Adams Kelly that trade mark application number 768214 had been assigned to another party pursuant to a Deed of Company Arrangement, that the assignee would now prosecute the opposition proceedings, and Fisher Adams Kelly, it said, should accordingly advise the Trade Marks Office that it no longer represented any interested party in the matter of this opposed trade mark. (Exhibit PCF - 12)

• Fisher Adams Kelly received a second letter of 8 August 2001, this from the Administrator confirming that an ownership dispute was in train.  He was unsure about its nature, and the identity of persons involved. Mr Raymond is mentioned. A Deed of Company Arrangement, he said, had been executed relating to the sale of Jolly Swagmen’s assets (including trade mark application 768214) to WM Productions Pty Ltd.  A Contract of Sale was in progress. (Exhibit PCF - 13)

• On 13 August 2001, Fisher Adams Kelly received notice from WM Productions Pty Ltd that it had purchased all of the assets and undertakings of Jolly Swagmen from that company’s Administrator and wished Fisher Adams Kelly to act for it as successor in title to the assets of Jolly Swagmen (included in which is the subject trade mark application). (Exhibit PCF - 14)  This position was confirmed by an Administrator, Mr Cole, on 14 August 2001 (Exhibit PCF - 15).  Mr Cole says that the trade marks assigned to WM Productions Pty Ltd were previously owned by Jolly Swagmen, not Mr Raymond, and Mr Fisher should not take instruction from Mr Raymond in the matter of the assigned marks.

• Mr Fisher then held discussions with the secretary of WM Productions Pty Ltd and confirmed his firm’s willingness to act for it in matters including trade mark 768214. Final resolution of the disputed ownership, however, is yet to be achieved.  WM Productions Pty Ltd seeks an order from the Court affirming ownership of the business and assets of Jolly Swagmen.  Until that order is obtained it is not inclined to proceed with the recordal of any change in the trade mark application details ¾ in particular it is not prepared to apply for entry of any assignment of trade mark application number 768214. 

The Applicant’s Submissions

Mr Fisher points to section 107 of the Trade Marks Act 1995 which reads:

Applications for record to be made of assignment etc. of trade mark whose registration is sought

107. (1) If a trade mark whose registration is being sought is assigned or transmitted:

(a) the applicant for the registration of the trade mark; or
(b) the person to whom it has been assigned or transmitted;

must apply to the Registrar for the assignment or transmission to be recorded.

(2) The application must:

(a) be in an approved form; and

(b) be filed, together with any prescribed document, in accordance with the regulations.

This provides, says Mr Fisher, that once the Court affirms WM Productions Pty Ltd’s ownership of Jolly Swagmen’s business and assets, the assignment of 768214 may be put into effect. WM Productions Pty Ltd will then have standing as the applicant in the substantive opposition, and will be entitled to take part in any hearing scheduled in respect of those proceedings.  Until such time as that ownership is confirmed, however, there is no party that can either instruct Fisher Adams Kelly, or otherwise act to defend the opposition action.  Mr Fisher, as I mentioned, characterises this as a hiatus in the ownership of the trade mark.

The matter of ownership was listed for Court for 9 September and Mr Fisher anticipates that ownership should be settled, and assignment action undertaken, before the end of October.

To hear the substantive opposition before these issues are resolved, and in absence of any representation on behalf of an application, would, he says, breach rules of natural justice. 

The Opponent’s Submissions

Mr Musgrave drew my attention to section 6 of the Act.  It reads, so far as is relevant,

Definitions

6. In this Act, unless the contrary intention appears:

applicant, in relation to an application, means the person in whose name the application is for the time being proceeding.

In accordance with the provisions of Part 5 of the Act, the Registrar, says Mr Musgrave, must give both applicant and opponent an opportunity to be heard in the opposition matter.  He says that Mr Fisher’s submission requires a reading of section 6 that goes beyond the statutory definition of applicant to include any person who may claim to have a better right or title to the application.  This, he says, is an unwarranted gloss.  The Act contains no such words and there is no basis on which the words defining applicant could be augmented in this way.

Mr Musgrave then challenges statements in the Fisher declaration which, he says, are less than adequate to explain the present impasse.  He submits that the failure to file assignment documents is at odds with an intention to resolve the ownership issue. The speediest way to have ownership sorted out, he says, would be to file for assignment and thereby invite Mr Raymond (and any other disputing entity) to put its counter claim.

In respect of the hiatus in ownership Mr Musgrave referred to the right of the public to search the Register, and the need for the Register to accurately record true details of ownership.  A hiatus in ownership was, he submitted, an anathema to the statutory scheme of the Act.

In response to Mr Fisher’s argument that, in absence of representation on behalf of the owner, the principles of natural justice stood as a bar to hearing the substantive matter, Mr Musgrave pointed to the requirements of regulations 5.14, and 21.15.  He said that in complying with the requirements of these sections the Registrar had discharged all necessary onus in terms of natural justice. The opponent had properly applied to be heard. The Registrar had accordingly given the person in whose name the application is for the time being proceeding ¾ that is, Jolly Swagmen ¾ at least 10 days written notice of the hearing and of the time, date and place fixed for that hearing.   He said that any ownership dispute that may be going on between WM Productions Pty Ltd, Mr Raymond and possibly the Administrator (none of whom is party to these proceedings) was a matter quite ancillary to the opposition, and need not concern the Registrar in any way.

On the other hand, however, Mr Musgrave said that while the opponent, Waltzing Matilda Centre, could not countenance an open-ended suspension of the substantive opposition, it was content to agree to some limited time.  He could not, however, agree to an undertaking proposed by Mr Fisher that within one month of the resolution of the ownership issue, Mr Fisher would move on with the assignment to WM Productions Pty Ltd.  This proposal, said Mr Musgrave, would be a nullity in the event that ownership was not resolved in WM Productions Pty Ltd’s favour.

Balance of convenience

Both parties made short submissions regarding the inconvenience anticipated as a result of an adverse finding.  Mr Fisher referred to the inconvenience that would be caused to WM Productions Pty Ltd ¾ in short this company would have no chance of arguing the case for registration of 768214, and the consequences in all likelihood, would be a loss of the trade mark application.   The inconvenience caused to Waltzing Matilda Centre, on the other hand, appears to be little (if anything) more than a delay in reaching closure.

Decision

As I mentioned at the outset of these reasons, regulation 5.16 provides the Registrar with the authority to give a direction in relation to the procedure in the opposition proceedings, so long as that direction is not inconsistent with the Regulations.  A direction must not be given, however, unless:

·    the Registrar is reasonably satisfied that the parties have been notified of the proposed direction;

·    the parties have been given reasonable opportunity to make representations concerning the proposed direction; and

·    the Registrar is reasonably satisfied that the proposed direction is appropriate. 

Regulation 21.15(9) states that the Registrar may adjourn a hearing by notifying each party to the hearing accordingly.  A request for a direction to suspend the opposition process by delaying the date of the hearing is therefore not inconsistent with the Regulations. 

I am satisfied that the parties have been notified of the proposed direction to suspend the opposition, and I am satisfied that they have been given adequate opportunity to make representations concerning that proposed direction. 

The remaining question, therefore, is whether I am reasonably satisfied that the proposed direction to defer the hearing date is appropriate. 

I agree with Mr Musgrave that, on the face of it, Jolly Swagmen is the person in whose name the application is for the time being proceeding and therefore it must be regarded as the applicant. I think that he is also right in that, so long as this remains the case, Jolly Swagmen is the only entity entitled to be represented as the applicant in respect of the section 52 opposition proceedings. However, in a departure from the terms of the old law, the Trade Marks Act 1995 provides for the assignment of pending trade mark applications. Subject to the Court’s affirmation of ownership, the evidence of the Fisher declaration is that, in compliance with the mandatory terms of section 107 of the Act, this transfer of title in trade mark application 768214 will promptly be recorded.

These circumstances, I think, allow me to take into account, not just Jolly Swagmen, the person in whose name the application is for the time being proceeding, but any party who lays claim to the application, and is intent, once ownership is confirmed, on being recorded as assignee.   I therefore reject Mr Musgrave’s claim that in order to consider WM Productions Pty Ltd’s right to any standing, a gloss must be applied to the section 6 definition of applicant.   In view of the fact that the ownership issue is already before the Court, I also reject Mr Musgrave’s contention that failure to file an assignment application indicates a lack of urgency in the resolution of ownership.   Moreover, in light of the appointment of the Administrator, and of the number of parties whose interests are involved in the property and business of Jolly Swagmen, the Court is unquestionably the appropriate place for these matters to be dealt with. 

As regards the so-called hiatus in ownership, Mr Fisher on a number of occasions pointed out that this is an application, and to date there is nothing on the Register for the public to search.  It is true that 768214 is indeed indexed and listed on the Trade Marks Office database as a pending application.  But as per the previous discussion, both applications and registrations are subject to the assignment provisions, and the public interest is best served by maintaining details of ownership that are current and correct. The hiatus would indeed concern me if it indicates abandonment.  On the evidence, however, that is not the case.   WM Productions Pty Ltd, I gather, lays claim to Jolly Swagmen’s business and to its intellectual property and I am ready to accept that this indicates a continuing intention to use the trade mark, the subject of application number 768214.

On the other hand, I quite agree with Mr Musgrave that no breach of natural justice has occurred.   Nor do I believe any rule of natural justice would be breached should the hearing in fact go ahead prior to resolution of the ownership matters now before the Court.

In sum, however, I am satisfied that it is appropriate to direct that, for the time being, the hearing in the substantive opposition filed against trade mark application number 768214 should be held over.   The balance of convenience lies with Fisher Adams Kelly’s clients.  They clearly have a good deal to lose should the hearing proceed forthwith.   The opponent, Waltzing Matilda Centre has, moreover, helpfully agreed that it is not opposed to a short delay.

I therefore direct that appointment of a time for the hearing of the substantive opposition on 768214 will be held over till the beginning of November 2001.  At that point, the Office will propose a date for the hearing some time in November, and the parties will be given an opportunity to comment before that date is finally scheduled.

In the event that, come November, the ownership of the Jolly Swagmen assets remains unresolved, the parties will be given another opportunity to make submissions in accordance with the terms of regulation 5.16

Costs

Both parties requested costs.  However, this is a hearing which neither party sought and, in all the circumstances, I do not think it is appropriate to make any award. 

Helen R Hardie
Deputy Registrar

3 October 2001