Women in Film and Television Inc v Lee McIvor

[2001] ATMO 24

TRADE MARKS ACT 1995

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

Re:Opposition by WOMEN IN FILM AND TELEVISION INC to registration of trade mark application 762052(41) - The Venus Awards- filed in the name of LEE McIVOR.

Background

Lee McIvor has applied to register the trade mark The Venus Awards in International Class 41.  The precise services specified are:

Entertainment services, being the organisation and conducting of a competition for awards which recognise meritorious achievement in the film, television and video industries

The Trade Marks Office has examined her application, number 762052, and accepted it for registration.

Women in Film and Television Inc (Winc) has opposed registration of the trade mark.  Winc is an association incorporated in New South Wales and is not to be confused with similarly-named bodies in other states.  In support of its opposition, it relies on two declarations, both by Erika Addis, with a total of 29 supporting exhibits.

In answer, Ms McIvor relies on two declarations she herself has made, with a total of 13 supporting exhibits.  These include declarations by Loretta O'Brien and Glenda Carriere.

In due course, there being no further evidence, the opposition came on for hearing.  I have been assigned to hear and decide the matter under delegation from the Registrar of Trade Marks.  At the hearing, Ms McIvor appeared.  Winc neither appeared nor relied on written submissions.

Issues and Decision

At the hearing, Ms McIvor put the matter in terms of ownership: the trade mark was hers, not Winc's.  The question of ownership is a ground of opposition provided for under s 58.  This provides specifically that any party may oppose registration of a trade mark on the ground that the applicant is not the owner of the trade mark.  It is not part of the issue to determine Winc's title to this trade mark.  What is at issue is Ms McIvor's title and Winc's motives in opposing the registration are irrelevant. 

Ms McIvor argued that, by going ahead with the planning of the Venus awards, she verified her claimed intention to use the mark, a claim that, in any case, is prima facie supported by the making of her application. 

To get to the bottom of this claim, it is necessary to set out the key facts.

Ms McIvor was at one stage a president of Winc.  Winc operates in New South Wales to support and recognise the work of women in film and television.

Similar organisations exist in other states.  There is an overall umbrella group, a company limited by guarantee, called WIFT Australia.  In this decision, I will refer to that company as Wifta.  Wifta has a clear connection with Winc, in that the latter, along with every other state WIFT group, nominates two members to the board of Wifta.  However, the two are distinct legal entities.

Ms McIvor was nominated to the Wifta board by Winc.  She was an inaugural director of Wifta, and was Executive Director and Media Officer when she resigned as a director in 1996.  At that time, she was replaced by Ms Erika Addis, whose declarations form the evidence on which Winc relies.

According to Ms McIvor, after she resigned from the board of Wifta she had no contact with any of the board members until 1997, when she approached the then-president with her idea for an awards event.  Subsequent discussion ensued with the then Executive Director.

Ms McIvor asserts that Wifta lent its name to the event to allow, among other things, "the ability to approach state and national film funding bodies for sponsorship using WIFT Australia's name, and alignment with the conference", being Wifta's annual conference, to be held in Sydney at about the same time.  Ms McIvor asserts that the entire concept of the awards night that was subsequently fleshed out was hers, including the name of the night: The Venus Awards.  She says that the role of Wifta was no more than a vehicle for her own creation.  She equates Wifta with a "principal sponsor", as she puts it in her evidence in support.  Her view is that the board of Wifta was more concerned with the running of its up-coming 1997 national conference.  The board of Wifta refused to positively commit sufficient resources to the awards night and left Ms McIvor with the task of organising the awards night as a "stand alone" event. 

Ms McIvor states that Ms Addis was not active as a board member at the time these things were transpiring.  Ms Addis, in her own evidence, has relied on minutes of Wifta board meetings and various other Wifta publications.  To judge from these, Wifta evolved the concept of an awards night over time.  It is not clear from Ms Addis's evidence just when or how the name The Venus Awards became attached to the awards night, but I am prepared to accept Ms McIvor's claim that the coining was hers.  For reasons that I will come to below, this does not affect the outcome.

It is fairly clear that the board of Wifta did take responsibility for a budget for the event, $65000 being authorised for this purpose according to the (apparently unratified) minutes of a board meeting held by telephone on 25 June 1997.  At that meeting, Ms McIvor is nominated as the Awards Director, and her terms of payment were set out in some sketchy detail.  Ms McIvor was apparently to report to Ms Burke, one of the board members, about this event.  I note that neither Ms Addis nor Ms McIvor were participants of that meeting.

Ms Addis relies on the minutes of the board meeting of 18 August 1997 to show that Ms McIvor continued to report to Ms Burke about the awards night, and that the board was concerned, by that time, about the scale of an apparent budget blow-out.  At that meeting, Mss McIvor, Addis and Burke were all absent.  Again, the minutes are not shown to be authorised.

It is hard to know precisely what transpired during the gestation of the first Venus Awards night.  It seems to be common ground in all the papers that Ms McIvor was doing most of the work.  The minutes of the board meeting of 2 September 1997 leave much unsaid when it is noted "there had been a breakdown of communication regarding the Awards and that a decision regarding the status of the Awards needed to be made".  While Ms McIvor may have regarded the board of Wifta as more hindrance than help, the board seems to have had some responsibility for the existence of the event.

However it was managed, the inaugural event, in October 1997, was promoted to attendees and potential attendees as a creature of Wifta.  Ms McIvor's analogy between Wifta and a principal sponsor is simply not borne out by the evidence.  Wifta's press releases and similar documents, parts of the evidence in the Addis declarations, show that the Awards were promoted to the world as coming directly from Wifta, to accompany that organisation's annual conference.  This was also reflected in articles in independent publications, including the Sydney Morning Herald.

I note that, from other pieces of evidence, Ms McIvor opened and operated a bank account in the name of Venus Award, registered (on 20 October 1997) herself as the proprietor of the registered business name Venus Award and was the operator of a Bankcard merchant business called Venus Awards.  Obviously, she filed the disputed trade mark application, on 14 May 1998.

By the time of the first awards night, in October 1997, Wifta was apparently in financial crisis.  Its constitution was apparently either to be amended or had been amended to allow it to accept individual memberships nationally.  According to Ms McIvor, Wifta was placed in liquidation "midway through 1998", though there is no documentation of the appointment of an official liquidator.

I think it is best to look at the final events from the point of view of Ms Glenda Carriere, whose declaration of 14 April 2000 forms part of the evidence on which Ms McIvor relies. Ms Carriere's is the last-dated evidence and goes to matters that are crucial to the ownership of the trade mark in question.  She has declared:

1. At the WIFT Australia AGM in December 1997, I (as one of the Queensland delegates to the Board of WIFT Australia) was elected as the President of WIFT Aust.

2. At this point in time the board of WIFT Australia was aware of large debts that the company faced.

3. At this AGM, various strategies were discussed as to how the company could honour those debts.

4. Early in 1998 a decision was agreed upon to place WIFT Australia in voluntary liquidation. As Treasurer of WIFT Aust, Erika Addis was given the task of beginning the process of liquidation.

5. On April 19 1998, Lee McIvor came to my residence in Brisbane to discuss the future of the Venus Awards. Lee McIvor had notified me prior to this meeting, that she wanted to begin working on the 1998 Awards.

6. The meeting with Lee McIvor lasted for about 3 hours.

7. At this meeting of April 19, I informed Ms McIvor of the financial situation of WIFT Australia.  My understanding of ASC regulations and Corporate Law was such that WIFT Australia could not continue to trade or conduct any business transactions, when it was facing liquidation.

8. Lee McIvor asked if she could continue with the 1998 Awards.

9. My instructions to her were that if she chose to do so she could not in any circumstances use or associate the name of WIFT Australia with the Awards.

10. Lee McIvor told me it was her intentions (sic) at this point to consult with sponsors to ascertain the viability of producing the Awards in 1998. She gave an undertaking that in no way would WIFT Australia's name be associated or affiliated with the 1998 Awards ceremony if she proceeded with the event.

11. I told Lee McIvor that I had no access to any WIFT Australia files and as the current President of the company, needed access to those files urgently. I asked if she would undertake to forward the documents to me on her return to Sydney. Ms McIvor agreed to do so and the documents were duly forwarded to me in May.

12. WIFT Australia was a company limited by guarantee and as such a totally separate legal entity from any state WIFT organisation.

13. At no stage did any of the state WIFT organisations, including WIFT Inc (NSW), have any legal standing with the Venus Awards. As a consequence WIFT Inc (NSW) has no authority or legal claim to the Venus Awards.

I accept that Ms McIvor was the one who gave the name The Venus Awards to the awards night that was run in conjunction with the 1997 annual conference of Wifta.  She was the driving force that coordinated the awards night itself, and responsible for its format and look.  From her point of view, the uncertain commitment of the board of Wifta must have been galling.  In various parts of the evidence, there is also clearly some difference of opinion about the terms of payment to be made to Ms McIvor for her work. 

From the evidence, Ms McIvor believed she was to be paid for organising the event and that as part of this she had:

the rights to the event for the following two years.  This was agreed by the Board at the September board meeting, and conveyed to me via Loretta O'Brien".

In Wifta's evidence there is a letter of 28 September 1997 from Ms O'Brien to Ms McIvor.  This offers Ms McIvor a two year option as Awards Director of the Venus Awards.  Ms McIvor also relies on the terms of that letter, and on a declaration from Loretta O'Brien, who says the letter in question was "ratified by WIFT Australia".  There had clearly been some prior negotiation about the terms payable for carrying out the duties of Awards Director.  However, the overall thrust of the evidence is that Ms McIvor was doing this work for the benefit of Wifta.  She has invoiced them for her expenses and, on 20 October 1997, for:

Fee for the management of the 1997 Venus Awards

As agreed the sum of $7,500 to be paid, conditional upon the signed contract for the management of the Venus Awards up to and including 1999.

Ms McIvor argued the relevance of evidence that the Victorian WIFT group has, for whatever reason, gone ahead with an event called the Lottie Lyall Awards, described as being "formerly known as the Venus Awards".  Ms McIvor portrayed this as proof that she was the only party with an intention to pursue the use of the trade mark The Venus Awards.  She argued that WIFT Victoria's award was, or would be, in direct competition with The Venus Awards, and that this showed that the various WIFT organisations had abandoned interest in the latter trade mark.

The question is, was Ms McIvor entitled to assert, when she filed her application on 14 May 1998, that she was the owner of the trade mark?

The law in this matter is still as laid out by Fullagar J in Aston v Harlee (1960) 103 CLR 391 at 398, explaining the effect of earlier authority, (emphasis added):

"It is clear enough from the course of legislation and of decision that an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on proprietorship.  The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration". "Authorship", says his Honour a little later, "involves the origination or first adoption of the word or design as and for a trade mark."

Fullagar J went on to explain that authorship of a mark does not mean that the applicant must necessarily have been, although Ms McIvor probably was, the "true and first inventor" or have "thought of it first".  However, potentially fatally for Ms McIvor's application, comes the caution:  "It is otherwise if [another claimant] has used the mark in relation to goods".  Justice Fullagar goes on to note a long line of authority to the effect that prior use by another party, of the same mark in respect of the same kind of thing, can invalidate the claim to ownership made by an applicant in filing an application.

When Wifta publicly used the trade mark The Venus Awards, it became in law the owner of the trade mark.  Ms McIvor may have coined the name and suggested it to Wifta, but that was as part of her duties for Wifta.  Ms McIvor's claim that she had the rights to the event is difficult to reconcile with her invoice to Wifta.  This was for her expenses and, more importantly for her services in managing the 1997 Awards.  That last was "conditional upon the signed contract for the management of the Venus Awards up to and including 1999".  It is clear that there has been confusion or disagreement about what was payable to Ms McIvor for the work she has done.  I can understand, but not agree with, Ms McIvor's reliance on her entitlements as the one who had coined the words, and the one who had done the work that had created the public ownership of the trade mark for Wifta.  However, that is a separate matter, one that goes to the terms on which a piece of Intellectual Property, the trade mark rights in question, was created for Wifta.

Ms McIvor has argued that, beyond that entitlement, she has also been authorised by Ms Carriere to take up the ownership that Wifta has subsequently, in effect, dropped.  However, I do not think that, in law, Wifta has abandoned the right that its use created.  It is true that, if it were to go into liquidation as it apparently was, Wifta would have found its operations very seriously restricted.  None the less, the property that it owns belongs to Wifta until it is either properly disposed of or, by a clear act of abandonment, destroyed.  If a liquidator is now involved, disposal of the rights to the trade mark in question is something for him/her.  In any case, I see nothing in the evidence to show that Ms Carriere had the authority to either give Wifta's trade mark rights to Ms McIvor or abandon them in her favour.  Nor do I see in her declaration any real suggestion that she purported to do so.

I think, in the context of a long and presumably difficult meeting with Ms McIvor, the words of Ms Carriere are no more than a caution about what Ms McIvor must not do if she is to take up the rights that Wifta was, in Ms Carriere's view, apparently soon to pass beyond using.  Again, I see nothing in Ms Carriere's words to show that Wifta had made a deliberate decision not to use the trade mark.  Ms Carriere was perhaps speaking without the authority of the board and, as she emphasises, without the necessary background papers.  She was, apparently, doing no more than trying to assess what the liquidator might do.  That was done, moreover, in ignorance of the fact that Wifta's trade mark rights were a valuable commodity.  For all that the liquidation was apparently voluntary, the abandoning of trade mark rights, like any other property rights, requires a deliberate forfeiture.  It seems to me that simply being unable to proceed with a future use of the mark because the business is in difficulty does not, without more, extinguish the rights that the business has accrued, nor does it expose those rights to being taken up by third parties.

There is no explanation for the fact that WIFT Victoria now feels itself able to claim some connection with an event (or former event) organised, and a trade mark used, by Wifta.  However, the fact that it feels free to do so does not support Ms McIvor.  I do not see that the endeavours of WIFT Victoria to recognise and promote the role of women in film and television shed a great deal of light on the property rights of Wifta.  As Ms McIvor herself argued, Wifta is a separate corporate entity, as distinguishable from WIFT Victoria as it is from Winc.  There is evidence that trade mark rights have been created, for the benefit of Wifta, by use.  Therefore, Ms McIvor needs more than speculation about the motives of unrelated WIFT groups, and suggestions of liquidation, if she is to show that those rights have been abandoned and that the name is thus potentially available to her or any other claimant.

Accordingly, while I can sympathise with Ms McIvor, I find that she was not entitled, when she made her application, to claim to be the owner of the trade mark in question.  I would stress that this appears to have been the result of poor communications within Wifta, together with Ms McIvor's misunderstanding of the law of trade marks.  There is no suggestion in any of the evidence before me, or in my conclusions, that Ms McIvor has ever acted dishonestly.

However, my final conclusion must still be that the opponent, Women in Film and Television Inc, has established a ground of opposition and that the trade mark should not be registered in the name of Ms McIvor.

Terry Williams
Hearing Officer
21 March 2001