Trade mark decision

BL Number

O/315/99

Decision date

10 September 1999

Hearing officer

Mr G Attfield

Mark

MEDIABASE

Classes

09, 35

Registered Proprietor

Donovan Data Systems Ltd

Applicant for Revocation

Associated Newspapers Ltd

Revocation (consolidated)

Section 46, and interlocutory hearing in relation to proprietor’s request to allow late filing of forms TM 8 and counterstatements (Rules 31(3), 31(4), 13, 60 and 62).

Result

Rule 31(3) - Proprietor’s request to allow late-filed forms TM 8 and counterstatement into proceedings refused.

Section 46 - Section 46: Application succeeded; registrations revoked.

Points Of Interest

• This decision was appealed to the Appointed Person. See the Appointed Person’s decision dated 2 February 2000 (SRIS O/026/00).

Summary

Although the proprietor’s agent filed evidence of use within the 3 month period specified in Rule 31(3), the Forms TM 8 and counterstatements were filed outside that period. In his written grounds for refusing to allow the late filed documents into the proceedings following an interlocutory hearing, the Hearing Officer took the view that Rule 31(4) had the effect of bringing all the substantive provisions of Rule 13 into play for revocation proceedings, and the period for filing forms TM 8 and the counterstatements thereby became non-extendable by virtue of Rule 62(1).

Following the usual authorities the Hearing Officer also took the view that the general discretionary powers under Rule 60 could not be invoked to overcome the specific provisions dealing with the time periods for filing documents. Moreover, there was no basis for him to exercise discretion to allow the statutory declarations to stand in place of the counterstatements in the proceedings. Although giving no weight to the matter, he also indicated that prima facie the evidence filed did not demonstrate use of the mark in suit.