Trade mark decision

BL Number

O/142/05

Decision date

20 May 2005

Hearing officer

Mr C Bowen

Mark

music choice

Classes

09, 38, 41

Applicant for Invalidity

Target Brands Inc

Registered Proprietor

Music Choice Ltd

Invalidity

Section 47(1) & (2). Request to allow a late filed Form TM8 into the proceedings.

Result

Request to allow a late filed Form TM8 into the proceedings: - Request refused.

Points Of Interest

• A useful view of Rule 33(6) and the scope of the Registrar’s discretion contained in that Rule.

Summary

The mark in suit was applied for on 25 October 2000 and registered on 31 August 2001. An application for invalidation was filed on 14 September 2004 and subsequently forwarded to the registered proprietor’s representatives Messrs Gill Jennings with a period allowed until 28 October 2004 for the filing of a Form TM8 and Counterstatement. On 27 October 2004 the firm of Olswang indicated that they were acting for the registered proprietor. They also filed a Form TM 33 (address for service) and the registered proprietor’s counterstatement. It was not realised until 29 October that a Form TM8 had been omitted and the form was filed that same day – but one day late.

Initially the Registry advised that the Registrar was prepared to exercise his discretion under Rule 66 of the Trade Mark Rules 2000 (as amended) and allow the Form TM8 into the proceedings. When the applicant objected and the matter was considered by the Hearing Officer, he decided that this procedure could not be adopted.

An interlocutory hearing took place at which both parties made extensive submissions in relation to the Trade Marks Act 1994 and the Trade Marks Rules 2000 (as amended). Particular attention was focused on Rule 33(6) which reads:

"The proprietor shall, within six weeks of the date on which he was sent a copy of Form TM26(I) and the statement by the Registrar, file a Form TM8, which shall include a counter-statement, otherwise the Registrar may treat him as not opposing the application.

In view of the wording of Rule 33(6) the Hearing Officer decided that the Form TM8 could not be accepted into the proceedings and thus the registered proprietor could not be a party in the proceedings. However, a registered trade mark has a presumption of validity (Section 72 of the Act) and therefore an applicant for invalidation has to file evidence to establish at least a prima facie case that its claims have merit. The applicant was set a period to file its evidence so that the proceedings could be continued, such evidence to be filed under the provisions of Rule 33(A)6.

A costs order was made against the registered proprietor but it is clear from the decision that as the Solicitors involved in the proceedings had been in error in not filing the Form TM8, they would pay the registered proprietor’s costs.