Yo-Merry Todd v Turner Entertainment Company

[2001] ATMO 5

TRADE MARKS ACT 1995

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

Re:An objection to an application for an extension of time to serve evidence in support in an Opposition by Turner Entertainment Company to registration of trade mark application 800208(31) - THE WIZARD OF OZ PET FOOD COMPANY and device- filed in the name of Yo-merry Todd.

Background

Yo-merry Todd (the trade mark applicant and objector in the present matter - hereinafter the objector) filed trade mark application 800208 on 14 July 1999. The application was advertised as accepted in the Australian Official Journal of Trade Marks of 4 May 2000 without objection from this Office. Turner Entertainment Company (the opponent and extension of time applicant in the present matter - hereinafter the opponent) filed a notice of opposition on 1 August 2000. Within the three months statutory time allowed for the service of the evidence in support of the opposition, the opponent filed, on 24 October 2000, an application for an extension of time of three months, from 1 November 2000 to 1 February 2001, to serve that evidence.

The objector immediately requested a hearing in relation to this extension of time. The matter came before me in Canberra on 13 December 2000, with both parties making submissions via telephone. The objector was represented by Mr Ron Webb of Counsel, instructed by Trilby Misso Lawyers, whilst the opponent was represented by Mr James Maxwell of Peter Maxwell and Associates.

Evidence

No evidence was filed or served in relation to this extension of time matter.

The opponent has supplied a copy of its submissions that directs me to relevant case law for determining extension of time applications. The objector has filed a declaration, of Mr George Bousgas, a lawyer in the employ of Trilby Misso Lawyers, to support its case of objection to the extension application. I am prepared to regard this declaration in the matter as a supporting submission and afford it the same weight as such a written submission.

Submissions

Mr Webb commenced submissions on behalf of the objector with the comment that circumstances exist, in relation to a history of dealings between the present parties, regarding applications for extensions of time on two other related applications. He directed me to applications numbered 818213 and 765075, both in the name of Yo-merry Todd. Mr Webb encouraged me to consider correspondence on those files and the situation for the present objector in her being frustrated from the normal operation of her business by the opponent's delaying tactics. Mr Webb claimed that some negotiations had taken place between the parties earlier in 2000 but that, by 15 June, the objector had indicated, to her agent, that she did not wish to continue negotiations beyond a deadline of 26 June. A facsimile sent to the Trade Marks Office and dated 27 June 2000 from the objector, in relation to file number 765075, set out this clear intention, he said. Mr Webb alleges that the opponent has endeavoured to initiate another round of negotiations beyond this deadline, on 3 August, but that the applicant has no intention of entering into further negotiations and he believes that the opponent is merely delaying the process for all three oppositions. He said that the circumstances in the present matter were not the routine considerations in a usual extension of time application and again encouraged me to consider the material on the other files. Mr Webb also stated that the balance of inconvenience in the matter clearly lay with the trade mark applicant, who was holding off exploiting the mark pending the outcome of the opposition. In contrast, he claimed, the opponent had no such inhibition in an economic sense as it could still attack the mark after registration. He stated that the time limits for serving evidence fulfilled the function of completing the opposition process in a timely manner and should not be disregarded.

Mr Maxwell began his submissions with the comment that all three opposition cases were independent of each other and should be independently assessed. He said that his office was not aware until 26 October 2000 that the letter to his office, from the lawyers acting for the objector, dated 19 September 2000, had any relevance to the present trade mark opposition. By that time, he said, the present extension of time had been filed - on 24 October. He also disputed the allegation that negotiations ended in June 2000 saying that the objector had recently telephoned him and that negotiations for resolution of the dispute had been part of that conversation. Mr Maxwell also stated that despite his belief that some negotiations are still on foot, the opponent was continuing to gather and collate the evidence. He added that the opponent is an overseas company and requires time to adequately prepare and collate its evidence. There is no question, he maintained, that the opponent has a serious interest in this opposition - particularly in view of the opponent's 1938 film classic 'The Wizard of Oz'. Mr Maxwell also said that the opponent's position is that all three oppositions should remain independent because the issues for all three are different - the marks are not identical, the classes of goods are different and the times of acceptance spread over more than 13 months. He said that he agreed that the time limits for the serving of evidence under the Act ought not to be disregarded but that, in this instance, the opponent is an overseas party. He maintained that genuine settlement negotiations had been on foot as at the date of the extension of time application - and he is of the opinion that this is still the case.

Mr Maxwell also provided written submissions dealing with relevant case law[1] that set out the factors to be considered for extension of time decisions and concluded with a request for costs in the matter.

[1] Vangedal-Nielsen and Others v Commissioner of Patents (1980) 1A IPR 731;

Discussion

This matter arises out of an application for an extension of time to serve evidence in terms of Regulation 5.15 of the Trade Marks Act 1995. The extension of time requested, in the present instance, is an extension of the time period provided under Regulation 5.7 for evidence in support of the opposition. The relevant legislation reads:

Extension of period to serve evidence and service of further evidence

5.15 (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) ....

(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; ...

(ii) ....

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) ....

(6) ....

The issue in contention - as per Reg. 5.15(3)(c)(i) - is whether the granting of that extension of time is 'appropriate'. The opponent, in an application on 24 October 2000, supported its application for further time with the following statement:

A settlement offer has been put to the applicant and we are presently waiting the applicant's response to that offer. The offer relates to this opposition and two other oppositions involving the applicant and similar trade marks. Further time is required to allow the negotiations to proceed in order to determine if the matters in issue between the parties are capable of amicable resolution. Additionally, we advise that the opponent has begun searching their records both in Australia and the United States in order to locate Evidence-in-Support of the opposition. Further time is required to complete those enquiries.

This statement sets down two reasons for the further time - firstly, that time is needed to complete negotiations and, secondly, that time is needed to search records in both Australia and the United States of America for evidence. The objector has attacked the claim of negotiations and has requested that I consider two other applications, numbers 818213 and 765075, to understand the facts of the matter.

There are four issues here, two reasons put forward by the opponent for the need for further time and the two matters raised by the objector concerning the lack of negotiations and of the request to have me consider the other two files. Because the opponent states that it is relying on its claim for time to complete negotiations and the objector says that there are no negotiations, I intend to roll those issues into one and then to deal with the other two matters separately.

(i) The question of 'negotiations'

At the time that the objection to this extension of time was made to this Office, on 9 November 2000, the objector attached a copy of a letter from its agent that it had sent to the opponent dated 19 September 2000, in relation to trade mark 765075, that stated that 'Our client does not accept your offer.... Accordingly no offer of settlement is currently on the table with regard to these trade marks.'

Mr Maxwell asserts that he was unaware of this correspondence, dated 19 September 2000, until after he had made the present application for further time on 24 October 2000. This assertion is at least partly supported by the Bousgas declaration at paragraph 6. This paragraph reads:

Correspondence was received from Peter Maxwell & Associates to our office dated 23 October 2000 enquiring as to our client's response to their settlement offer and by correspondence of 26 October 2000 we forwarded a further copy of our correspondence rejecting their offer dated 19 September 2000.

The scenario put to me by both sides is not inconsistent with the original letter of rejection of the negotiations from the objector (dated 19 September 2000 and linked to 765075) not arriving with the person responsible for file 800208 at the office of Peter Maxwell & Associates. When the time arrived for the opponent to require an extension of time to keep the present matter (in relation to file 800208) 'on foot', it wrote to the objector's agent on 23 October 2000 to request a response to the settlement offer (of 2 August 2000) because none was apparent on the file. The next day (24 October) the application was filed for an extension of time for 800208, quoting reasons both of 'negotiations' and of time required to locate evidence. On 26 October, the legal representative for the objector sent, to the opponent, a further copy of its letter of 19 September 2000 rejecting the offer.

Given that this letter identified trade mark 765075 there is no clear reason why the opponent should have applied this correspondence to the present opposition - if it was still hoping to pursue a negotiated settlement at least in respect of the other class of goods that is claimed in 800208.

This 'joining of the dots' of the material available to me appears to fit the claims made by both parties, and without some evidence to contradict such a hypothesis, I am left without any obvious alternative. The fate of the original letter of 19 September remains somewhat of a mystery. The objector provided no proof of posting; even if it had been properly sent it could have been lost within the mail in Australia Post; even it had been properly delivered to the agent for the opponent it could have been lost within that office. Each of these outcomes may seem unlikely - and yet one of them did, apparently, occur in this case.

Whatever the circumstances of the original letter, I am not in any position to find that the opponent did actually receive it and chose not to acknowledge it.

The objector has asserted the view that by mid-June 2000; 'the curtain was pulled down on negotiations'. This may have been settled in the mind of the applicant, but obviously was not so settled in the mind of the opponent - as can be seen by the letters to the applicant of both 2 August and 23 October 2000.

Thus, from the above, I am led to the conclusion that the opponent as at 24 October 2000 was justified in relying on this reason in its application for further time.

As Mr Maxwell correctly pointed out, in relation to the Official Notice of the Journal of 18 November 1999 and repeated on 25 November, that 'negotiations between the parties' may be properly relied upon, without declaratory support, in certain circumstances. These circumstances include a time period within 12 months beyond the statutory three month time period under the 1995 Act for serving evidence in support of an opposition.

(ii) The opponent's claim of searching records to collate evidence

In addition to the claim for 'negotiations', the opponent has also claimed that the further time was required to research records, in both Australia and the United States of America, to collect and collate its evidence.

The case law to which Mr Maxwell directed me in his written submissions, and with which Mr Webb concurred as containing the relevant criteria by which to examine an extension of time application, highlight the following five tests:

·    the length of time already allowed,

·    the reasons put forward to justify the extension of time,

·    the seriousness of the opposition,

·    the relative inconvenience likely to be suffered by the two parties, and

·    the public interest in the matter.

In relation to the time already allowed, this application is a first extension of time request for a time period of three months for service of the evidence in support on this opposition. The reasons put forward - being 'negotiations in train' and 'time needed to prepare the evidence' should the negotiations fail - in the circumstances of this matter, I find sufficient to justify the opponent's request for further time. Additionally, in the present instance, the opponent is an overseas company and this is the first extension of time requested on this opposition action. The courts[2] have generally supported the view 'that the delegate was entitled to have regard to the notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time'. The opponent claims that it wishes to mount a serious opposition based on the opponent's 1938 film 'The Wizard of Oz' - and on this score I have no reason to doubt their intentions.

[2]

The objector contended that it is being commercially disadvantaged by the opponent's failure to serve its evidence because the objector does not intend to use its mark until the opposition matter is settled. The opponent claims a serious disadvantage if the extension of time is refused, because it would be 'shut out' of this opposition matter within this Office and would then be forced to court action. Such a course could prove to be a far more expensive option for both parties and is an option, I believe, that would seriously inconvenience the opponent, as it had contended. I believe that the inconvenience to the opponent of being 'shut out' of this action outweighs the objector's claim of being commercially disadvantaged by an inability to use the mark until the opposition is finalised. For the present opposition, the length of time since opposition proceedings began, by the filing of the notice of opposition on 1 August 2000, amounts to six months by 1 February 2001 - the date to which the present extension of time continues.

The remaining matter concerns the public interest. In this regard, within reasonable time limits, it is always advantageous for the Registrar to be in possession of all the facts when it comes time for a decision to be issued on the substantive matter. For this particular action I do not believe that a single three-month extension of time for the serving of the evidence is an unreasonable delay in order for such evidence to be located, collated and served.

In the present instance, I find that both of the reasons provided by the opponent in the extension of time application to be valid and able to support the application being 'properly made'.

From the above considerations, I believe that the present circumstances satisfy the condition that it is 'appropriate' to grant the extension of time, under the terms of Reg. 5.15.

I might also add that, given the strength of the comments by Mr Webb, that the objector had no further interest in a negotiated settlement, the opponent may find it difficult to rely on that ground for a future extension of time application, without clear documented proof.

(iii) The objector's request that I look at opposition actions on other files

In general, I must agree with Mr Maxwell that opposition actions on separate trade mark applications are independent processes. Notwithstanding, however, that evidence and submissions may sometimes be directed to multiple co-pending trade marks. Here, however, there was no mutual understanding that the fate of this opposition and that of 818213 and 765075 are interdependent - indeed Mr Maxwell denies it. I find that I have been given no good reason to take further account of these two trade marks in respect of this extension of time matter for 800208.

I might briefly add that had I been given reason to think that this file was in some way dependent on either of the other two files, the present circumstances are very different for this file. The present matter concerns a first application for an extension of time in which to serve the evidence in support on this opposition whereas one other file to which the objector led me, 765075, has had five extensions of time already approved, whilst 818213 has a time frame behind the present application. The circumstances for 765075 create a very different scenario when it is considered that the length of time already allowed produces, in general, a rising onus on the extension applicant to justify the further time.

However, I can find no good reason to accept that any material available for the present matter directs me to consider comments on either of the files 765075 or 818213.

Conclusion

From the foregoing, in my capacity as a delegate of the Registrar, I grant this application for the extension of time to 1 February 2001, in which to serve evidence in support in this opposition matter.

Costs

The opponent has requested its costs in this matter and I can see no reason why they should not follow the event here. Thus, I award costs against the objector in this matter in accord with the Official scale.

Don Nancarrow
Hearing Officer

19 January 2001

Kaiser Aluminium and Chemical Corporation v Reynolds Metals Co 1A. IPR 107;
Australian Olympic Committee v Brennan (1994) 30 IPR 44

Lyons and Another (Trading as Mitty's Authorized Newsagency) v Registrar of
1 IPR 416 at 420.

Trade Marks and Another