Turner Entertainment Company v Yo-Merry Todd

[2001] ATMO 17

TRADE MARKS ACT 1995

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

Re:Turner Entertainment Company and applications for extension of time to file evidence in support of opposition to applications 765075, 800208, 818213(25, 31, 16) - Wizard of Oz and Logo- and opposition thereto by Yo-Merry Todd.

Background

Yo-Merry Todd (‘Ms Todd’) has applied to register these three trade marks which include the words THE WIZARD OF OZ.  Generally stated, since it is not of consequence to these proceedings, the goods for which these trade marks are sought to be registered are clothing, pet foods and paper goods.

After each of these trade mark applications was accepted for registration, Turner Entertainment Company (‘Turner’) filed notice of opposition to registration of the applications.  The relevant dates are included in the table below.

Turner has sought extensions of time in which to serve evidence in support of the oppositions.  Ms Todd has opposed grant of those extensions.  The issues were the subject of a hearing before me on 15 February 2001 in Canberra where I heard submissions by teleconference.  Mr Ron Webb of Counsel represented Ms Todd; Mr James Maxwell of Peter Maxwell & Associates represented Turner.

Prior to discussing the arguments of the parties, it is convenient to set out the sequence of events central to these issues.  This chronology is derived from the declarations of James Maxwell of Peter Maxwell & Associates , Yo-Merry Todd and George Bousgas of Trilby Misso, Lawyers.

Application No	Date	Event
Applications
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).
30 Jan 00	Evidence in Support due – extensions allowed till 30/11/00
27 Nov 00	Extension to serve evidence in Support filed – opposed.
800208	14 Jul 1999	Application filed.
04 May 2000	Acceptance advertised in the Australian Official Journal of Trade Marks
01 Aug 2000	Notice of opposition filed (due 4 Aug 2000)
01 Nov 2000	Evidence in support due – unsuccessful opposition to extension.
818213	23 Dec 1999	Application filed.
24 Aug 2000	Acceptance advertised in the Australian Official Journal of Trade Marks
11 Sep 2000	Notice of opposition filed (due 24 Nov 2000)
Other
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.
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.
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.

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.

The content of Ms Todd’s telephone conversation of 30 November 2000 with Mr Maxwell is the matter of some dispute; Ms Todd says that she phoned Mr Maxwell to tell him that she was ‘not going away’.  Mr Maxwell suggests that she phoned to see if there was ‘any way to resolve the situation’.  I prefer Mr Maxwell’s account since it makes little sense contextually for Ms Todd to phone and, essentially, reject negotiation when her solicitors had already done that for her; further, Mr Maxwell states that there were two witnesses to the conversation who, I am sure, could be called as witnesses if these issues were to be appealed.  However, whichever version of this event is the better, Ms Todd’s personal intervention introduces another dynamic both to any negotiations that may have been taking place and consequently to the collection of evidence.

It is, however, Ms Todd’s position that negotiations ceased on 15 June 2000 as Turner had been told that, if no meaningful offer by that date had been received, she would contemplate no further negotiations.  This position appears to be inconsistent with her letter to Peter Maxwell & Associates of 5 September 2000 in which she said, “I hold great hope that this matter may be settled in the near future and amicably”.  At the very least, Turner might be forgiven for understanding from this that negotiations continued.

I note also that there were, in effect, two sets of negotiations – both instigated either by Ms Todd or at her behest by her legal advisors.  The first set proved to be fruitless when amendments to the trade marks could not be effected under the Trade Marks Act 1995 because the amendments would have substantially changed the identity of the trade marks.  The second set of negotiations was commenced on 17 May 2000 via a letter from Pizzeys which, puzzlingly, rejected the first settlement in terms which could be characterized as hostile despite the settlement having been drawn up in sympathy with Ms Todd’s original offer to Turner (a copy of her letter to Turner of 13 October 1999 confirms this offer).  I take from this that Pizzeys withdrew Ms Todd’s first offer.  They suggested in this letter that “a representative of [Turner] make the time to meet with Ms Todd in order to discuss [settlement].  In this regard, it is our understanding that Ms Todd may be willing to negotiate a settlement, but on terms to be negotiated [sic]”.

An inference which could be drawn from the foregoing is that Ms Todd had not fully instructed Pizzeys in these matters since they obviously believed that the settlement offer originated with Turner and was drafted in derisory terms - this was not true.

It would seem, from the stance of Ms Todd’s current legal advisers and from the thrust of Counsel’s submissions, that Ms Todd’s current legal advisers are unaware of Ms Todd’s offer to recommence negotiations in the Pizzey letter, of Turner’s attempts to bring on those negotiations and of Ms Todd’s letter of 5 September 2000 which appears to indicate that those negotiations were, at that date, continuing.

Reasons

Regulation 5.15 allows:

5.15     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).

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.

Prior instances where negotiations have been a factor in delegate’s reasons offer some guidance for me.

In Lord Bloody Wog Rolo v United Artists Corporation (1988) 11 IPR 516 the Registrar's delegate refused an application for a second term of three months' extension of time, the grounds being identical to the first, because no progress had been established towards settlement of the dispute, nor had the opponent lodged any evidence in support of the opposition.  In Universal City Studios v Frankenstein Pty Ltd (1994) AIPC ¶91-044 the delegate refused a second extension of time for service of evidence in support requested on the grounds that “further time was required to conduct negotiations”. It was held that the making of an offer did not constitute a negotiation. That term was appropriate only where there was a "mutual discussion and arrangement of terms" (Macquarie Dictionary). That decision was cited with approval in ACI Australia Ltd v Shelm Merchandising Co Pty Ltd (1995) 32 IPR 563 which added that "the mere fact that a party to a dispute has made a settlement offer does not absolve it from the need to show that, on balance of the elements referred to in Lyons, supra, it is entitled to the extension it seeks".

In Jonathan Sceats Design Pty Ltd v Jonathan Ross Sceats 15 IPR 59 and Bundy American v Rent-A-Wreck 5 IPR 307, Senior Assistant Registrar Farquhar accepted negotiations as a mitigating circumstance for long delays in the service of evidence.

Here the applicant for registration has initiated two sets of negotiations and some of her various legal advisers, from time to time, appear not to have been fully conversant with the nature or origin of those negotiations.  This feature and the negotiations themselves have been factors which have contributed to the delay on the part of the opponent.  While I can appreciate Ms Todd’s eagerness to resolve these issues, her attempts at negotiation, her actions in attempting to find legal representatives who would resolve the matter with dispatch (and her communicating with the legal representatives of Turner directly), have all contributed materially to the time that it has taken to reach such resolution.

In terms of 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, Turner has provided sufficient reason and a proper case has been made out justifying the extension.

As regards the balance of convenience to the parties, I note that there are three parallel oppositions on foot.  Turner is alleging that it has had prior use of the words WIZARD OF OZ as a trade mark and this issue is central to the three oppositions.  It is in the interests of both parties, and the registrar, that the issues be dealt with conjointly (if possible) in the one forum rather than to have the expense (or pay the costs) of gathering evidence to use both before the registrar and elsewhere.  Counsel noted that Ms Todd has been formulating these trade marks and the marketing of the goods in respect of which they are to be used for some seven years.  There is no evidence before me to support this claim and Ms Todd’s willingness to amend the trade marks in her offer of settlement in relation to 800208 and 765075, “you will appreciate that I must amend my trade mark application [sic] immediately […] this amendment would be the removal of the words WIZARD OF leaving THE OZ in both cases”, appears to be inconsistent with this stance.

Mr Maxwell avers that Turner has now been sent a draft declaration for its consideration.  The collation of this evidence appears to have occurred quite rapidly once Turner were informed that negotiations had broken down.  I think that it could be fairly stated that Peter Maxwell & Associates have now realised that, notwithstanding the actions of Ms Todd which previously encouraged a belief to the contrary, moves towards the second negotiated settlement were probably illusory and were a diversion from the main issue and that their attention is now on the evidence.  There is no evidence of undue additional inconvenience to Ms Todd if the extensions are allowed but potential for great inconvenience and cost to both parties if the extensions are not allowed.

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.

Turner, in its Notices of Opposition to the registration of these applications alleges deception and confusion in terms of sections 43, 44 and 60 of the Act.

I therefore find that the balance of convenience swings towards Turner.

Decision

I allow the extensions of time which Turner seeks.

Costs

Having been successful, Turner is entitled to its costs which I award against Ms Todd.  I note that the major part of Turner’s costs in relation to this hearing was in relation to 765075 in which it should be allowed its costs at scale.  In relation to each of the other applications, Turner should be entitled to any official fees in relation to each matter but other costs at a half of scale.

Ian Thompson
Hearing Officer

26 February 2001