Turner Entertainment Company v Yo-Merry Todd

[2002] ATMO 12

TRADE MARKS ACT 1995

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

Re:Turner Entertainment Company and applications for extensions of time to file evidence in support of opposition to applications 765075 (25) and 800208 (31) - Wizard of Oz and Logo- and opposition thereto by Yo-Merry Todd.

Background
This is the fourth hearing in relation to the opponent's applications for extensions of time to service evidence in support of their various notices of opposition.  There is a third trade mark application (818213) which is opposed, and for which extensions of time to serve evidence in support have been sought by the opponent.  This third trade mark is not under consideration in this decision.

Written reasons have been provided by Hearing Officer Thompson dated 26 February 2001 and by myself dated 7 August 2001 and 5 November 2001.  As I stated in my last decision, I do not propose setting out the history of this matter again.  However, I will state that the two earlier decisions confirmed that negotiations between the parties broke down in November 2000.  It is from that date that the opponent has had to fully justify its need to obtain the extensions of time requested.

In my decision of 7 August 2001, I allowed an extension of time for 765075 to 28 October 2001. The opponent now seeks an extension of that time to 28 November 2001.  In relation to 800208, the opponent seeks an extension of time to 1 December 2001.  The trade mark applicant has opposed the granting of these extensions of time.

The matter came before me for telephone hearing on 14 December 2001.  Ms Julia Baird of counsel appeared for the opponent, instructed by Mr James Maxwell of Peter Maxwell & Associates.  Mr Tannahill appeared on behalf of Ms Todd.

Sequence of Events
Since the date of the last hearing on 17 October 2001, the following declarations have been filed and served as evidence in support:

Name	Date	Filing Date
Mathew Tucker	5 June 2001	9 November 2001
Rudy Lukman	5 June 2001	9 November 2001
Linda Seeto	5 June 2001	9 November 2001
Jacqueline North	5 June 2001	9 November 2001
Vanessa Sulman	17 September 2001	9 November 2001
Penelope McDonald	18 September 2001	9 November 2001
Josie Cabral	18 September 2001	9 November 2001
Barbara Maria Grummonds	18 September 2001	9 November 2001
Peter Litton	18 September 2001	9 November 2001
Donald Joseph Tanner	18 September 2001	9 November 2001
Jorge R Schneider	18 September 2001	9 November 2001
Robynne Lyndsay Sanders	16 November 2001	16 November 2001
Gregory Robertson	27 November 2001	28 November 2001
Graeme Holland	22 November 2001	28 November 2001
Josephine Rozman	22 November 2001	28 November 2001
Marc Gareton	11 December 2001	11 December 2001

With the exception of Mr Gareton's declaration, all the declarations are the subject of the current request for an extension of time.  Mr Gareton's declaration is the subject of a further extension of time request.

By way of background, the declarations filed on 9 November 2001 can be described as public and industry opinion declarations. Ms Sanders is a legal practitioner in the employment of the opponent's representatives.  Her declaration, filed on 16 November 2001, sets out searches undertaken by Media Monitors relating to the use of the term "Wizard of Oz" in the Australian print media.  The declarations filed on 28 November 2001 include two declarations by members of the paper products industry who declare their knowledge of the use of "Wizard of Oz" on paper products.  The third declaration filed on 28 November is by Mr Robertson, who is the Vice President and General Manager of Warner Bros (Australia) Pty Limited (a member of the AOL Time Warner Group).  Mr Robertson provides information on the number of times that the "Wizard of Oz" movie has been broadcast on Australian television, together with some ancillary information.

In support of its applications for extension of time, the opponent's representative, Mr Peter Maxwell, has provided declarations which set out the steps that have been taken to this point to advance the evidence in support.  The opponent specifically relies on Mr Maxwell's declarations dated:

• 29 October 2001;

• 28 November 2001; and

• 13 December 2001.

It is sufficient to say that Mr Maxwell asserts that delays in filing the evidence in support are due to a number of factors, not least of which is the need to obtain instructions via the United States.  The internal structure and practices of the opponent are such that requests for information, instructions and clearances on declaratory material need to go through a number of offices here and in the United States.  While I have already commented on this in my last decision, I am satisfied that Mr Maxwell has now done what he can to minimise the length and number of parties involved in the chain and to ensure that instructions are provided in as timely a manner as possible.  I also accept that the events of 11 September 2001 have caused unavoidable delay.

In relation to the evidence filed on 9 November 2001, a considerable amount of time elapsed between the completion of some of the declarations and their actual filing.  I am not satisfied that this has resulted from the need to obtain instructions or clearances from the United States for each of the declarations.  Rather, I believe, based on statements made by Mr Maxwell during the hearing, that the delay was caused by error or omission within Mr Maxwell's office - the declarations were misplaced or forgotten for a period of time.  I do not believe that the delay was due to any deliberate act, nor was it an action which was designed to delay the proceedings or extract some tactical advantage.  It was simply an error.  In itself, it is not an error which should be fatal to the current application.

Finally, the opponent has advised the TMO that the Gareton declaration completes its evidence in support.  This is relevant in determining whether satisfactory progress is being made to bring this matter to a resolution.

Reasons

As I have stated in my earlier decisions, in determining whether an application under Regulation 5.15 is appropriate, I must take the following matters into account: 

• whether sufficient reasons have been provided and whether a proper case has been made out justifying the extension;

• the relative inconvenience to the parties concerned; and

• the public interest.

Addressing each in turn:

1. Whether sufficient reasons have been provided and whether a proper case has been made out justifying the extension

I am satisfied that the opponent has taken appropriate steps to shorten the lines of communication with its client.  This has addressed my concerns regarding the applicant suffering detriment because of the corporate structure of the opponent. 

I am also satisfied that, in the main, there have been legitimate reasons for the delays to date.

In relation to the forgotten or overlooked evidence, I am satisfied that this was the result of error.  I do not propose to penalise the opponent due to this.

I am satisfied that the opponent is serious in its opposition, and has taken appropriate steps to finalise the evidence in support, at least insofar as the evidence filed prior to December 2001 is concerned.  I make no comment on the filing of the Gareton declaration, nor the outstanding applications for extensions of time.

1. Balance of convenience to the parties

In the absence of any evidence or declarations by the applicant regarding a change in her position, I am not satisfied that the balance of convenience which has favoured the opponent to date, has now shifted in the applicant's favour.  While Mr Tannahill did seek to rely on a letter by Mr Robert J Walsh of McNally Australia Pty Limited to support an assertion that the applicant had been hindered by the delay, the letter was not in declaratory form nor was it served on the opponent until very late in the telephone hearing.  For these reasons, I refused to admit the letter into evidence.  At the same time, Mr Tannahill also requested leave to file his own statutory declaration to address the balance of convenience issue.  Again however, I refused leave to do so on the basis that this evidence should have been done prior to the hearing.  To admit the evidence at such a late stage would have been unfair to the opponent, as it had already made its submissions.  It would also have required another hearing and further delay.

On the basis of my previous findings and the lack of any material from the applicant, I am satisfied that the balance of convenience remains with the opponent.

1. The public interest

In my earlier decisions I confirmed that the public interest favours the full ventilation and investigation of the matter.  However, I also noted there was also a significant public interest in the timely resolution of matters and compliance with procedural rules and fairness.  I am satisfied that there have been genuine delays in the finalisation of the opponent's evidence, that appropriate steps were taken to ensure evidence was promptly filed, and the omission of some evidence was due to error rather than deliberate act.  I am also comforted by the fact that the evidence in support now appears to have been finalised, and the public interest in having the matter progress in a timely, but appropriately informed manner, should be realised.

Decision
I am satisfied that the extension of time should be granted in this instance.  Accordingly, I allow the extension of time which the opponent seeks to 28 November and 1 December 2001, respectively. 

Costs
I direct that each party bear their own costs in relation to this hearing.

Geoff Purvis-Smith
Hearing Officer
04 February 2002