Turner Entertainment Company v Yo-Merry Todd

[2001] ATMO 107

TRADE MARKS ACT 1995

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

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

Background
This is the third hearing in relation to the opponent's applications for extensions of time to service evidence in support of their notice of opposition.  Written reasons have been provided by Hearing Officer Thompson dated 26 February 2001 and by myself dated 7 August 2001.  I do not propose to set out the history of this matter again.  It is sufficient to say 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 the extension of time to 28 August 2001.  On 27 August 2001, the opponent's attorneys, Peter Maxwell & Associates (Maxwells) wrote to the Trade Marks Office (TMO) requesting a further extension of time to 28 October 2001.  The request was supported by a statutory declaration of James Vernon Maxwell dated 27 August 2001.     On 4 September 2001, the TMO wrote to Maxwells advising them that the reasons provided did not warrant the granting of the further extension of time.  However, Maxwells were also given the opportunity to provide more compelling reasons for the application or request that the matter be set down for hearing on the extension of time issue.  They chose the latter course by way of letter dated 7 September 2001.  On 18 September 2001, the new attorney for Ms Todd, Mr Tannahill of Ahearn Fox, wrote to the Trade Marks Office and indicated that Ms Todd did not wish to oppose the application for extension of time.  It is not known whether Mr Tannahill was aware of the request for a hearing at that time.

The matter came before me for telephone hearing on 17 October 2001.  Ms Julia Baird of counsel appeared for the opponent.  Mr Tannahill appeared on behalf of Ms Todd.  At the hearing, it became clear that, notwithstanding his letter of 18 September 2001, Mr Tanahill now sought to oppose the application for extension of time on behalf of his client. 

Sequence of Events
As I have already mentioned, I do not propose to reproduce the material set out in the earlier decisions.  However, it is important to set out what has occurred since the last hearing was conducted on 12 July 2001. 

For the purposes of this application, I am obliged to take into account only those events or documents which occurred or were filed, respectively, prior to the application date of 27 August 2001.  However, Ms Baird has also submitted that I may have regard to events which have occurred and material which has been provided to the TMO in the period from 28 August through to the hearing on 17 October 2001.  This material, Ms Baird submits, may be of assistance in determining whether the opponent is serious in its opposition and earnest in its preparation of the matter for ultimate determination.  That being said, Ms Baird seeks to rely on a further declaration by James Vernon Maxwell dated 17 October 2001.

The declarations of Mr Maxwell which directly address the current application may be summarised as follows:

Declaration of 27 August 2001:

• the opponent has been through several ownership changes leading to restructures and the "absence and unavailability" of executives, which has meant other executives have had to be found to execute documents;

• the lines of communication between Maxwells and the opponent are extremely long due to the need to send requests through several channels within the opponent;

• the material in question is several decades old and may be in the hands of former licensees;

• the preparation of the "lead" declaration has been delayed - in light of the time taken to date, a decision was made to prepare a declaration which encompassed all material to hand to date, however this declaration was, at the time the declaration was signed, still forthcoming; and

• a number of trade declarations have now been filed, although it was expected that a further four to six weeks would be required to receive the balance of the trade declarations.  No details were provided of what form these "trade" declarations would take.

Declaration of 17 October 2001:

• on 2 October 2001, a declaration by Ms Louise Sams, Senior Vice President and General Counsel of Turner Entertainment Co. was filed and served;

• the opponent is still continuing its search for further records, and in particular, is making enquiries of its Australian subsidiary for Australian material;

• Maxwells have only just been informed of the name of the contact person within the opponent's Australian subsidiary and have now "redirected" their requests for further information to that person;

• the Australian material is expected to be received within the next two weeks, at which time it will be reduced to evidentiary form and filed and served;

• further trade declarations will be filed and served within the next two weeks;

• some delay has been caused by the terrorist attacks in the United States on September 11 and this may require a further extension of time to 28 November 2001.

Ms Baird indicated that there were two bases on which the declaration was relevant, namely:

1. to allay concern about whether granting an extension would be futile - in other words, to reassure me that if I were to grant the requested extension of time, that this would not be in vain as evidence is being actively pursued and served; and

2. because of the events of 11 September 2001, there may be further delay.

I am prepared to take the material into account.  However, in doing so, I note that there are matters contained within the declaration of 17 October 2001 that do not assist the opponent in making out its case for an extension of time. 

The evidence filed to date

To date, Turner has served and filed only part of its evidence in support.  The majority of this evidence was filed on 27 August 2001 and comprised 11 "trade declarations" by various deponents and declarations by Ms Robynne Lyndsay Sanders dated 27 August 2001 and  Mr Kenneth James Taylor dated 17 August 2001. 

Further evidence was filed on 2 October 2001 and comprised a declaration by Ms Loiuse Sams, an employee of the opponent's American operation.  It is this evidence that is directly affected by the current application for an extension of time.

In determining whether to grant the extension of time, it is appropriate for me to assess the conduct of the opponent to this point.  In this regard, I have some concerns regarding the time it has taken for the opponent to be collate and reduce the material filed on 27 August to declaratory form.  Specifically:

• the declaration of Ms Sanders, who is a solicitor with Maxwells, sets out the results of internet searches that Ms Sanders conducted in March and May 2001.  However, the declaration was not signed until the day before the expiry of the last extension.  There is no explanation why Ms Sanders took three months to reduce her searches to declaratory form.

• The declaration of Mr Taylor, who is a private investigator engaged by Maxwells, states that he first received instructions in this matter from Maxwells on 9 June 2000.  He then conducted inquiries, which concluded on 19 June 2000.  Again, there is no explanation why Mr Taylor took 13 months to reduce his investigations to material form.

• The 11 "trade declarations" comprise a relatively simple questionnaire attached to a precedent statutory declaration.  Ten of the declarations have dates falling within the period 17 through 27 August 2001, and have been witnessed by either Mr Maxwell or Ms Sanders.  The remaining declaration is undated, and has been witnessed by an unknown Justice of the Peace. Each declaration states that the deponent "[has] been handed the annexed questionnaire" and a number appear to have been completed in the same pen as the questionnaire.  Accordingly, they indicate to me that the declarations have been signed at the same time as the questionnaire was filled out.  Notwithstanding this, Mr Maxwell declared on 28 May 2001, that

  Enquiries have also been made in relation to obtaining trade declarations from third parties.  We have received a number of completed questionnaires and are awaiting further questionnaires for completion.  We expect to finalise the trade declarations in the course of the next four to six weeks. (paragraph 7)

It does not appear to me that any of the declarations to which Mr Maxwell referred have been filed as evidence.  Therefore, the time taken to file these documents has now stretched beyond the four to six weeks envisaged by Mr Maxwell to some 18 weeks.  While there may be an explanation for the delay, or even the re-issuing of questionnaires, nothing has been placed before me to this effect.

I am also concerned with the length of time it has taken for the opponent to advise Maxwells of an appropriate contact officer in Australia.  In his declaration of 17 October 2001, Mr Maxwell states that his firm "[has] now been provided with a contact name within the Opponent's Australian subsidiary and we have now redirected our requests for further information to that person".  The information sought is "further documentation and records specific to Australia".  The impression given by Mr Maxwell's declarations throughout these proceedings is that, to date, efforts to collate evidence in America and Australia have been channelled via the United States.  However, it now appears that some of the material may be identified and collated by an Australian representative, without the need to go via the United States.  This avenue of inquiry should have been pursued much earlier, particularly in light of the opponent's claim that the evidentiary process has been hampered by long and complex communication lines.

Having raised these concerns, I accept that there is nothing wrong with a party availing itself of the time allowed for filing and service of evidence.  However, a difficulty arises when that same party seeks to extend the time allowed by relying on circumstances which affect the off-shore situation, all the while holding local evidence which could have been collated and reduced to declaratory form much earlier.  Here, there is nothing before me to explain why the trade declarations and the declarations of Ms Sanders and Mr Taylor were not filed much earlier in the piece.  Coupled with the fact that an Australian contact has apparently only just been located, I believe that the declarations show that the opponent has not been diligent in its pursuit and finalisation of its Australian evidence.  This goes directly to the bona fides of the application and the motivation of the opponent in pursuing their claim with due diligence and vigour.  I will return to this in due course.

Reasons

In determining whether an application under Regulation 5.15 is appropriate, I must take into account the following matters:

• 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

As I have already mentioned, the opponent relies on:

• difficulties relating to changes in corporate structure;

• staff movements that have led to difficulties finding an appropriate deponent;

• the long history of usage of the trade mark; and

• the lengthy channels of communication between Maxwells and the opponent

to explain its delay in finalising its evidence in support.  Additionally, the opponent asserts that it has made substantial progress in the location, obtaining and preparation of its evidence, including evidence from third parties over whom it has no control.  In the opponent's opinion, it has even taken the conciliatory approach of filing an incomplete lead declaration to show its desire not to obstruct the progress of the matter. 

The Australian situation

I have already made it clear that I am unimpressed with the efforts taken thus far by the opponent in relation to collation of Australian evidence.  This is strengthened by the fact that I do not believe that any of the first three factors set out above have materially affected this local collation of evidence.   Further, I am not satisfied that the fourth factor - complex lines of communication - is to blame for the delay in seeking or receiving instructions in relation to an Australian contact.

Accordingly, I am not satisfied that opponent has provided sufficient reasons or made out a proper case in so far as it relates to the Australian evidence. 

The American situation

The opponent submits that it has been hampered by each of the four factors set out above. The first and third factors have been thoroughly examined in the previous decisions and remain, to my mind, sufficient to justify reasonable extensions of time.  Progress has been made in the period since my last decision.

In relation to the second factor, while there is no information before me as to how long Ms Sams has been employed by the opponent in her current position or available to sign the declaration, I am prepared to give the opponent the benefit of the doubt in this respect.  I accept that the opponent has been hindered by an inability to find a suitable declarant.  This now appears to have been resolved.

However, I remain unsatisfied in relation to the claim that complex lines of communication within the opponent have delayed its collation of evidence.  Certainly, I do not believe that the applicant should be disadvantaged because of the size or internal structure of the opponent.  The opponent chose to bring this case, and, subsequent to the breakdown in negotiations, has been given almost 12 months to finalise its evidence.  It has been more than two years since the notice of opposition was originally filed.  If it is truly serious in its opposition, then it should have implemented procedures whereby the matter could be pursued with due efficiency and diligence.  The fact that it appears incapable or unwilling to do this cannot be read in its favour or in support of so many applications for extension of time.

Taking all these factors into account, I am satisfied, but only just, that sufficient reasons and a proper case has been made out in relation to the American evidence.

As the application relates to the filing of evidence, and does not differentiate between Australian and American evidence, I am satisfied that a positive finding in relation to one portion of the evidence is sufficient to mean that a proper case has been made out for the application as a whole.  In practical terms, it would not be appropriate for me to grant the extension of time for only part of the evidence.  If I were to do that, it could lead to artificial distinctions being made, or may bar Australian evidence which only comes to light as the result of American inquiries.  I am not prepared to do this.

1. Balance of convenience to the parties

In my previous decision, I found that the balance of convenience favoured the opponent.  In the present case, the applicant has not pointed to anything that would tend to tip the balance in her favour.  Accordingly, and in the presence of some forward momentum by the opponent, the balance still rests in the opponent's favour. 

However, I also noted in my last decision that the entitlement to file and serve evidence, and, by implication, obtain the benefit of extensions of time, can be relinquished by undue delay.  I believe that the opponent is perilously close to a finding of such delay, at least in relation to the Australian evidence.  Should the opponent seek a further extension, it will be incumbent upon it to justify further delays, and to establish that it is not the result of internal inefficiency and/or a lack of diligence in finalising the evidence. 

1. The public interest

Again, I refer to the comments in my previous decision.  The public interest still favours the full ventilation and investigation of the matter.  However, there is also a significant public interest in the timely resolution of matters and compliance with procedural rules and fairness.  In the present case, I am satisfied that there have been genuine delays in the finalisation of the opponent's American evidence.  These delays have resulted due to the length of time over which the opponent has been required to search its records and complications relating to corporate structures and licensing arrangements.  These are not matters that are within the control of the opponent.  Accordingly, I am satisfied that the public interest in full ventilation of the matter has not yet been outweighed by the need for timely resolution of matters.

Decision
While I have expressed concern as to the lack of progress that has been made to date in relation to the Australian evidence, I have also accepted that the delays in relation to the American evidence have, on the whole, been reasonable and outside of the control of the opponent.  Therefore, and taking into account that the opponent has filed some evidence prior to the expiry of the last extension period, 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 October 2001.  I make no finding or comment on the opponent's foreshadowing of an application of a further extension of time to 28 November 2001.

Costs
In the normal course, costs would follow the event.  However, I am far from satisfied with the diligence with which the opponent has pursued its Australian evidence.  On the other hand, it has been successful in its overall application.  In the circumstances, I make no order for costs - each party will have to be content to carry their own.

Geoff Purvis-Smith
Hearing Officer
05 November 2001