Turner Entertainment Company v Yo-Merry Todd

[2001] ATMO 69

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
Yo-Merry Todd (‘Ms Todd’) has applied to register the trade mark mentioned above.  The mark includes the words the wizard of oz and covers clothing and headgear.  The mark was duly examined and accepted by the Trade Marks Office on 16 June 1999.  The acceptance was advertised in the Australian Official Journal of Trade Marks on 1 July 1999.  Turner Entertainment Company (‘Turner’) filed a notice of opposition to registration of the application on 30 September 1999. 

Turner was required to serve and file evidence in support by 30 January 2000.  However, as the result of a number of successful applications for extension of time, this period was extended to 30 November 2000.  On 27 November 2000, Turner sought a further extension of time to 28 February 2001. Ms Todd objected to the grant and requested a hearing.  The hearing was conducted by Hearing Officer Thompson on 15 February 2001.  On 26 February 2001, Hearing Officer Thompson issued his decision granting an extension of time until 28 February 2001.  On 28 February 2001, Turner sought a further extension of time to 28 May 2001.  This further extension was unopposed, and was granted by the Trade Marks Office.

On 28 May 2001, Turner sought a further extension of time to 28 August 2001.  Ms Todd, under cover of a letter from her solicitors, Trilby Misso Lawyers, dated 13 June 2001, objected to the granting of an extension of time and again, requested a hearing.  The hearing was subsequently conducted by me by telephone on 12 July 2001 in Canberra.  Ms Julia Baird of counsel appeared on behalf of Turner.  Ms Carmen Champion of counsel appeared for Ms Todd.

Sequence of Events
Hearing Officer Thompson, in his decision of 26 February 2001 set out the history of the subject trade mark application.  I have reviewed the history of the file and see no reason to depart from his chronological summary.  His summary, where relevant, was as follows:

Application No	Date	Event
765075	17 Jun 1998	Application filed.
01 Jul 1999	Acceptance advertised in the Australian Official Journal of Trade Marks
30 Sep 1999	Notice of Opposition filed (due 1 Oct 1999).
07 Oct 1999	Ms Todd contacts Peter Maxwell Associates (PMA) with settlement offer – offer relates to all three applications – offer communicated to Turner – Turner requests advice from PMA.  (‘1st Settlement’)
07 Oct 1999 to 17 Nov 1999	Parties work on 1st Settlement.
17 Nov 1999	Ms Todd writes to PMA saying settlement is not possible due to Trade Marks Office restrictions on how trade marks can be amended.  Letter states “I will be back in touch in the near further, when I have investigated this further”.
13 Dec 1999	Ms Todd contacts PMA and says that she has the matter in hand.
22 Dec 1999	Pizzeys inform PMA that they now act for Ms Todd.
30 Jan 00	Evidence in Support due – extensions allowed till 30/11/00
17 May 2000	Pizzeys withdraw Ms Todd’s offer but suggest negotiations.  (‘2nd Negotiations’)
28 Mar 2000 to 31 May 2000	PMA seeks to establish basis for negotiations from Ms Todd (via Pizzeys) and Turner.
23 May 2000	Trilby Misso & Co advise that they now act for Ms Todd.
31 May 2000	Turner appoints James Maxwell for face-to-face negotiations – they will provide parameters to him.
08 Jun 2000	Riley, Gray-Spencer, Lawyers inform PMA that they now act for Ms Todd. Riley, Gray-Spencer object to extension of time.
09 Jun 2000	PMA advises Riley, Gray-Spencer that they are awaiting instructions from Turner.
02 Aug 2000	Revised settlement offer sent to Riley, Gray-Spencer.
05 Sep 2000	Ms Todd informs PMA that Trilby Misso again act for her.  Letter states “I hold great hope that this matter may be settled in the near future and amicably”.
06 Sep 2000	Copies of relevant documents forwarded to Trilby Misso.
23 Oct 2000	PMA send reminder to Trilby Misso
26 Oct 2000	Trilby Misso send copy of letter dated 19 Sep 2000 rejecting offer.  First letter has apparently gone astray.
27 Nov 00	Extension to serve evidence in Support filed – opposed.
30 Nov 2000	James Maxwell receives phone call from Ms Todd.  The content of the conversation is the subject of dispute but its occurrence is not.

Hearing Officer Thompson also stated:

The above sequence of events has been protracted and complexity has been added to it by the fact that Peter Maxwell & Associates were advised over the period that Ms Todd’s legal representation in these matters had changed, four times.  Placed in the context of negotiations, which Turner has obviously believed to be taking place, Turner (via Peter Maxwell & Associates) have, in fact, negotiated with five entities over the period: Ms Todd, Pizzeys, Trilby Misso (twice) and Riley, Gray-Spencer.

Hearing Officer Thompson went on to find that negotiations had ultimately ceased by the end of November 2000.

Hearing Officer Thompson's findings and comments are relevant to the current application insofar as they explain the protracted negotiations that have contributed to the length of time the matter has taken thus far.  They are not determinative of the current application.  Rather, the current application must be assessed in light of the events that have transpired since the hearing of the original application on 15 February 2001. 

Subsequent Events
Turner relies on the following material in support of its current application for extension of time:

1. Statutory Declaration of James Vernon Maxwell dated 28 May 2001;

2. Statutory Declaration of James Vernon Maxwell dated 28 February 2001;

3. Statutory Declaration of James Vernon Maxwell dated 14 February 2001 and the chronology exhibited as 'JVM-1' referred to in that declaration.

Shortly stated, the declaration of 14 February 2001 and its annexure formed the basis of Hearing Officer Thompson's chronological summary, which I have reproduced, above.  The declarations of 28 February and 28 May 2001 set out the events which have transpired since the last hearing. 

In his declaration of 28 February, Mr Maxwell states that since 14 February 2001, his client has actively pursued the gathering of evidence in support.  Specifically, a draft statutory declaration had been prepared and forwarded to Turner on 14 February 2001.  He also stated that Turner had been requested to undertake further searches, and advise his firm of the results.  Any additional material would then have to be incorporated into the final declaration.  Further investigations were also being undertaken relating to previous licensees and third parties over which Turner has no control.  There were delays being experienced in relation to these other parties, however draft statutory declarations had been forwarded to them for comment.  The comments were likely to take at least one month to be returned.  Other delays were being caused by the need to search relevant material dating back to 1938. 

The declaration of 28 May 2001 indicated, that although the declarations had been sent to Turner, a corporate restructure had meant that the relevant Executive and Legal Counsel for Turner was no longer an employee.  Accordingly, another Executive had to be located.  In the words of Mr Maxwell, this "took some time".  Once a new declarant was located, some additional amendments were made and more material came to light.  As at the date of the declaration, the draft declaration was still being completed.  Similarly, further evidence came to light regarding ex-licensees and third parties.  Again, this needed to be finalised before further steps could be taken.  This was expected to take another four to six weeks. 

In summary, as at 28 May 2001, Mr Maxwell expected that the lead declaration could be finalised and sent for execution within the next four weeks (ie by the end of June) and the further declaration regarding ex-licensees and third parties would reach the draft-for-comment stage within three or four weeks (again, by the end of June).

By the time of the hearing on 12 July 2001 however, no update had been provided by Turner on the progress of the evidence in support.  Counsel for Turner indicated that further work had been done, but, as this work post-dated the current application, it was not relevant.  In other word, the grounds for the current application could only be supported by acts which had been undertaken prior to the date of the application.  I accept that this is correct. 

Ms Todd has not filed any of her own declarations relating to the application for extension of time in the period since Hearing Officer Thompson issued his decision.  However, she did rely on her declaration of 14 February 2001 in support of this opposition.  The relevant contents of this declaration are set out later in this decision.

Reasons
Regulation 5.15 states:

Extension of period to serve evidence and service of further evidence

(1)A party to the opposition proceedings may apply to the Registrar:

(a)for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or

(b)for permission to serve a copy of further evidence on the other party.

(2)The Registrar may grant an application on reasonable terms specified by the Registrar.

(3)The Registrar must not grant an application unless the Registrar:

(a)is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

(b)has given the parties a reasonable opportunity to make representations concerning the application; and

(c)is reasonably satisfied that:

(i)in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence; and

(ii)in the case of an application to which paragraph (1) (b) applies — permission to serve a copy of further evidence;

is appropriate.

(4)For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

(5)If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.

(6)Subregulations (2), (3) and (4) apply to an application under subregulation (5).

As Hearing Officer Thompson confirmed in his earlier decision:

Guidelines upon the issues to be determined have been laid down in cases such as Vangedal-Nielsen v Commissioner of Patents (1980) 3 ALR 140 and Lyons (trading as Mitty's Authorised Newsagency) v Registrar of Trade (1983) 1 IPR 416. I must consider: 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.

Hearing Officer Thompson also considered a number of authorities which dealt with applications for extensions of time where negotiations were a factor.  These considerations and cases are not specifically relevant to the current matter, as there appears to have been no negotiations in the relevant period.  However, Hearing Officer Thompson did find that Ms Todd's actions had contributed to the delay on the part of Turner.  This is a finding that is relevant to the current matter, as it gives context to the amount of time taken thus far.  Again, having read Hearing Officer Thompson's decision, I see no reason to disagree with his assessment that negotiations were continuing until the end of November 2000.  Accordingly, it is appropriate to consider that the time for the filing of evidence in support practically commenced at that time.  The delay to that point was excusable, as there was a reasonable expectation in Turner's corporate mind that the matter might be resolved prior to the undertaking of extensive and potentially expensive, collation of evidence. 

With this in mind, I now turn to the balance of the matters for consideration:

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

To date, Turner appears to have been pursuing the matter with due diligence.  However, I am concerned that the process is now becoming bogged down for a number of reasons.  I accept that there has been some upheaval caused by the change in ownership, and the need to find a suitable alternative officer.  However, once a suitable deponent was found, and the contents of his or her declaration finalised, the actual process of entering the data and obtaining a signature should be relatively straightforward.  I believe that the estimation of time by Mr Maxwell of four weeks to prepare the draft to be reasonable.

In relation to the obtaining of declarations of third parties, I acknowledge that this can take considerable time.  However, Mr Maxwell has indicated that the draft declarations could be forwarded for comment by the end of June.  Presumably, it will then take some time for these drafts to be reviewed and sent back for amendment.  Further time will then be required to have them executed.  Again, the time frames that Mr Maxwell referred to were not unreasonable.

In view of the suggested timetables and the reason for them, I am satisfied that sufficient reasons have been provided.

Whether a proper case has been made out will, to some extent, depend on the submissions made by counsel for Turner.  Ms Baird submitted that the time allowed to date, and sought in the application was not unreasonable.  Given Hearing Officer Thompson's findings in relation to the cause of prior delay, that there appears to have been progress since the last hearing, and the relatively short period that has elapsed since negotiations finally broke down in November 2000[1], I am satisfied that Ms Baird's submission is correct. 

[1] In this regard, I note the comments of Deputy Registrar Hardie in Australian Olympic Committee Inc v Brennan 30 IPR at 46 where the Deputy Registrar indicated that extensions of time up to 9 months are regularly requested and allowed.

I am also satisfied that Turner is serious in its opposition.

1. Balance of convenience to the parties

Ms Todd relies on her statutory declaration of 13 February 2001 to set out the extent to which she is disadvantaged by the non-resolution of this opposition matter.  Specifically, she states that she has been working on the development of a range of products for seven years and that registration of the trade mark is an integral step in the business.  For the last three years, Ms Todd had been working to a business plan which aimed for a pre-Sydney Olympic games product release.  Clearly, that opportunity has now passed by.  Accordingly, any inconvenience which might have existed prior to the Olympics has now fallen away.  No other business objectives or plans were raised in the declaration.

On the other hand, if the extension of time is not granted, Turner will be unable to serve and file any evidence in support.  This could have a deleterious effects on Turner's ability to pursue its case and satisfy the onus of proof. 

While I am mindful of the need to progress matters towards timely resolution, I believe that this should be done with procedural fairness and with the parties being entitled to bring the evidence on which they seek to rely.  This entitlement can be relinquished by undue delay.  I am not satisfied that there has been any such relinquishment to date.  However, in saying this, I have noted the statement by Ms Baird that her client is confident that this is the last extension of time to file evidence in support that it will seek.  Any further application for extension of time would run a serious risk of amounting to undue delay. 

Accordingly, at this point, the balance of convenience rests on Turner's side. 

1. The public interest

I note that Hearing Officer Thompson addressed this issue in his decision and I adopt his comments as follows:

As regards the public interest, in Rollbits Pty. Ltd. v Rowntree Macintosh plc(1986) AIPC ¶90-291, it was held that the public interest is paramount in matters in which deception is alleged, and that this is best served if both parties are able to present their evidence and arguments fully. I further note the comments of Richards J in Pioneer Hi-Bred Corn Co v HyLine Chicks Pty Ltd [1979] RPC 410, at 435:

Within reasonable limits it furthers the public interest to allow consideration of any available evidence that will assist in providing a clearer picture of the awareness of rival marks as affecting the likelihood of deception or confusion.

The grounds of opposition relied upon by Turner, allege deception and confusion in terms of sections 43, 44 and 60 of the Act.  Counsel for Turner also indicated that s.42 may be pursued in light of the recent decision in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 and the provisions of s.52 of the Trade Practices Act 1974. These are all serious matters, where the public interest is an important consideration. It is therefore in the public interest that these matters be fully ventilated and investigated, and a determination reached on all the available information. Accordingly, I am satisfied that the public interest requires that the extension be granted.

Decision
I allow the extension of time which Turner seeks.

Costs
Having been successful in its application, Turner is entitled to its costs.  I direct that Ms Todd pay the costs of Turner in accordance with the Regulations. 

Geoff Purvis-Smith
Hearing Officer

7 August 2001