Trade mark decision

BL Number

O/018/02

Decision date

23 November 2001

Hearing officer

Mr S Thorley QC

Mark

OMITEC

Classes

09

Applicant for Revocation

Omi International Plc

Registered Proprietor

Emitec Gesellschaft Fur Emissionstechnologie MBH

Revocation

Appeal against the Registrar’s decision to allow revocation

Result

Registrar’s decision set aside and extension of time allowed so that evidence of use could be accepted into the proceedings.

Points Of Interest

• 1. Rules 31(2), 31(8) and 68(3) : This decision clarifies the link between Rule 31(2) and 68(3) and also defines the scope of Rule 31(8).

Summary

An application for revocation was filed on 30 October 2000. A copy of the application was sent to the registered proprietors care of their agents with the deadline of 9 February 2001 set for the filing of a counterstatement and details of use of the mark. In February 1999 the registered proprietors had been placed in administration and subsequently went into liquidation in September 2000. In order to save costs the Liquidators decided to handle the proceedings. The Liquidators filed a Form TM8 and counterstatement within the time allowed but merely stated that the mark had been used by a subsidiary company. No details of such use were provided.

The Registry wrote to the liquidators on 21 February 2001 to say that the details provided were insufficient to defend the registration. No response was received because that letter never reached the person concerned due to a failure of the Post Office or loss of the letter within the Liquidators firm. The Registrar issued her decision, on the basis of an undefended application for revocation, on 16 May 2001. The original trade mark agents wrote to the Registrar asking for the matter to be re-opened and at the same time appealed the decision to the Appointed Person.

The matter came before the Appointed Person with a request that the Registrar’s decision be set aside and that a witness statement detailing use of the mark at issue be allowed into the proceedings.

The Appointed Person decided as follows:-

Rule 31(8) allows the filing of any type of evidence into the proceedings if the circumstances justify the act of discretion.

The restriction in Rule 68(3) as regards Rule 31(2) relates only to the filing of a counterstatement. It does not preclude an extension of time for filing evidence of use if the circumstances justify the granting of such an extension.

The registered proprietor should not be disadvantaged because of an error by his legal advisors.

There was no damage to the applicants in allowing the proceedings to continue; subject to an award of costs for additional work and attendance at the hearing.

In all the circumstances the Appointed Person decided to exercise his discretion to set aside the Registrar’s decision and allow into the proceedings evidence of use of the registered mark.