Trade mark decision

BL Number

O/460/01

Decision date

19 October 2001

Hearing officer

Mr M Reynolds

Mark

TITAN

Classes

25, 28

Applicant

Leisure Services Group Limited

Opponents

Head Sport AG

Opposition

Request for an extension of time in which to file the fee in respect of Form TM7 in opposition proceedings. Rules 66 and 68 of the Trade Marks Rules 2000.

Result

Request for extension of time refused.

Points Of Interest

• This decision is clearly a significant statement of the Registrar's view that fees in opposition proceedings must be paid within the fixed period of three months for filing opposition.

Summary

Following advertisement of the above marks the three month period in which opposition could be filed expired on 19 April 2000. Opposition was filed on that date by way of Form TM7 and accompanied by a statement of the grounds of opposition. The documents were filed with a request that the fee payable be deducted from the agents deposit account held at the Patent Office. Due to an oversight by another partner in the firm in not advising the financial controller of the deposit account, of filings made a few days previously, there was insufficient money in the account to pay the due fee. The agent concerned filed additional monies on 20 April which were credited to his account on 25 April 2000. The opposition Form TM7 was given a filing date of 20 April 2000 but this was outside the fixed three month period allowed for filing opposition.

The Office refused to admit the opposition and a Hearing took place before a Registry Hearing Officer. The Hearing Officer refused the opposition and issued his reasons in writing on 10 October 2000 (BL O/383/00). The prospective opponents appealed to the Appointed Person. That appeal was set down for a hearing before the Appointed Person for 5 June 2001 but before the hearing the Appointed Person drew the prospective opponents and the Registry’s attention to the reported case of A’s application 1974 RPC 663. The opponents filed an amended Notice of Appeal prior to the Hearing to bring in a request for discretion under Rule 66 of the Trade Marks Rules 2000 and a reference to A’s case in support of that request.

Having read the papers and listened to submissions the Appointed Person considered that the opponents had an arguable case in relation to the request for an extension of time. However, as he considered that the Appointed Person had no powers to hear an extension of time request de novo he remitted the proceedings to the Registry to hear the request.

The prospective opponents duly submitted a request for a retrospective extension of time for payment of the fee on the Form TM 7 but this request was rejected by the Office. In setting down his reasons the Hearing Officer explained the background to the 1994 Trade Marks Act and the introduction of a fixed period of three months for filing opposition as compared to the previous period of one month which was extendible. The Hearing Officer carefully considered the provisions of the 1994 Act, the Trade Marks Rules 2000 and the Trade Marks (Fees) Rules 2000 and concluded that not only should the extension of time request be refused; it should not have been entertained in the first place.

In the event that the above decision was wrong the Hearing Officer went on to consider the extension of time request on its merits. He reviewed in detail the circumstances relating to payment of the appropriate fee at the due time. He accepted that the opponents legal advisors had clearly meant to pay the fee by way of the deposit account held at the Office but went on to conclude that it would not be appropriate to allow the extension since such a decision would adversely affect the applicant.