Trade mark decision

BL Number

O/398/02

Decision date

23 September 2002

Hearing officer

Mr Geoffrey Hobbs QC

Mark

BAT OUT OF HELL

Classes

09, 16, 25, 41

Applicant

Meat Loaf

Opponent

Nicholas Dynes Gracey

Opposition

Opposition deemed abandoned in error. Request for re-hearing, for costs/compensation; for striking out of statement in Hearing Officer's decision.

Result

Appeal partially allowed.

Points Of Interest

• See also Appointed Person’s decision of 19 September 2001 (BL O/455/01) and Hearing Officer's decision of 15 February 2002 (BL O/077/02).

Summary

In his decision of 19 September 2001 (BL O/455/01) the Appointed Person allowed an appeal from Mr Gracey and remitted the proceedings to the Registrar. He directed that "the costs of the appeal be costs in the remitted application".

Mr Gracey wrote to the Appointed Person and asked him to reconsider and to be reheard in the matter of costs and requested an award of costs against the Registrar on the grounds that his opposition had not been handled properly and he had been put to additional expense by having to appeal to the Appointed Person.

The Appointed Person responded to Mr Gracey's letter on the basis that as his decision had been issued he was functus officio in the matter (could not alter his decision).

The remitted application was dealt with by a Registry Hearing Officer who asked for observations from both parties before issuing his decision. No offer of a Hearing as required by Rule 54 of the Trade Marks Rules 2000 was made. A decision was subsequently issued dated 15 February 2002 which removed the mark registered in error from the Register; amended its status to pending and reinstated Mr Gracey's opposition to the registration. The Hearing Officer also stated "I also direct that an oral hearing be appointed to determine the substantive opposition to the application and that the determination of costs be left to the substantive hearing. However, I note that the Registrar has no power to award costs against herself."

Mr Gracey appealed against the Hearing Officer's decision on the grounds that Rule 54 had not been complied with; that he should be awarded compensation as set down in the Human Rights Act in relation to the Registrar's irregular handling of his opposition and that he should be awarded costs for the additional work he had had to undertake. It later transpired at the Hearing before the Appointed Person that Mr Gracey's appeal of the Hearing Officer's decision of 15 February 2002 related only to the statement "However, I would note that the Registrar has no power to award costs against herself".

In relation to the rehearing aspect from a Human Rights Act perspective the Appointed Person decided that a re-hearing was not necessary to protect Mr Gracey’s rights. (See reasons set down in BL O/397/02 paragraphs 51 to 64).

As regards the failure to offer a hearing the Appointed Person considered that Mr Gracey must succeed and the statement in the Hearing Officer’s decision. "However, I note that the Registrar has no power to award costs against herself should be struck out."

The Appointed Person also considered the matters of compensation and costs. He decided that in this instance compensation could be construed as an award of damages and decided that as a tribunal the Appointed Person could not award damages. Such a matter would have to be considered by the High Court if Mr Gracey wished to pursue that matter further. As to costs the Appointed Person noted that the Hearing Officer was correct to say that "the Registrar had no power to award costs against herself". However, he drew attention to the terms of Rule 66 of the Trade Marks Rules 2000 which states "any irregularity in procedure in or before the Office or the Registrar may be rectified on such terms as the Registrar may direct". In his view this allowed for the payment of costs or repayment of costs and expenses incurred by the error in question. Consideration of any payment proposed under this Rule should be fully explained in any written decision in the substantive proceedings.

As regards the costs of this appeal the Appointed Person set the figure of £100 to be awarded at the conclusion of the proceedings.