Lowden v Lowden Guitar Company Ltd [2004] EWHC 2531 (Ch)

[2004] EWHC 2531 (Ch)Case No CH/2004/APP/0473
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Venue Royal Courts of Justice, Strand, London, WC2A 2LLDate 17 th November 2004
Before
THE HONOURABLE MR JUSTICE PATTEN
Between
LowdenClaimantLowden Guitar Company LtdDefendant
IN THE MATTER OF the Trade Marks Act 1994
and
IN THE MATTER OF Trade Mark Registration No. 1588546 in the name of GEORGE LOWDEN (“the Appellant”)
and
IN THE MATTER OF Revocation Application No. 81567 by
THE LOWDEN GUITAR COMPANY LIMITED (“the Respondent”)
Hearing Hearing date: 28 th October 2004
Simon Malynicz (instructed by Hamlins) for the Appellant
Jonathan Hill (instructed by BPE Solicitors) for the Respondent
Michael Tappin (instructed by Treasury Solicitor) for the Registrar of Trade Marks
Judgment
Mr Justice Patten :
Introduction
[1]Under s.46(1) of the Trade Marks Act 1994 (“the 1994 Act”) the registration of a trade mark may be revoked if:
“(a) … within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use; (b) … such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use; …. ”
Applications for revocation may be made to the Registrar or to the Court, unless there are pending Court proceedings concerning the mark, in which case the Court is the appropriate forum: see s.46(4). If revocation is ordered, then the rights of the proprietor are deemed to have ceased as from the date of the application for revocation or the date on which the Registrar or the Court is satisfied that the grounds for revocation first existed (if earlier): see s.46(6).[2]The procedure to be followed on an application for revocation under s.46(1)(a) and s.46(1)(b) is set out in the Trade Marks Rules 2000 (“the TMR”), which are the relevant rules for the purposes of this appeal. Rule 31 provides as follows: “31. -(1) An application to the registrar for revocation under section 46(1)(a) or (b) of the registration of a trade mark shall be made on Form TM26(N) together with a statement of the grounds on which the application is made; the registrar shall send a copy of the application and the statement to the proprietor.(2) Within three months of the date on which a copy of the notice and statement is sent by the registrar to the proprietor, the proprietor may file a counter-statement, in conjunction with notice of the same on Form TM8 and either: a) two copies of evidence of use made of the mark; or(b) reasons for non-use of the mark. Where such a notice and counter-statement, and evidence of use of the mark or reasons for non-use of the mark, are filed within the prescribed period, the registrar shall send a copy of the Form TM8 and the counter-statement, and the evidence of use of the mark or the reasons for non-use of the mark, to the applicant.(3) Where a counter-statement, in conjunction with a notice of the same, on Form TM8, and evidence of use of the mark or reasons for non-use of the mark, are not filed by the proprietor within the period prescribed by paragraph (2), the registrar may treat his opposition to the application as having been withdrawn.(4) Within three months of the date upon which a copy of the Form TM8 and counter-statement is sent by the registrar to the applicant, the applicant may file such evidence as he may consider necessary to adduce in support of the grounds stated in his application and shall send a copy thereof to the proprietor.(5) If the applicant files no evidence under paragraph (4) above in support of his application, he shall, unless the registrar otherwise directs, be deemed to have withdrawn his application.(6) If the applicant files evidence under paragraph (4) above or the registrar otherwise directs under paragraph (5) above, the proprietor who has filed a notice and counter-statement under paragraph (2) above may, within three months of the date on which either a copy of the evidence or a copy of the direction is sent to him, file such further evidence as he may consider necessary in support of the reasons stated in the counter-statement and shall send a copy thereof to the applicant.(7) Within three months of the date upon which a copy of the proprietor's evidence is sent to him under paragraph (6) above, the applicant may file evidence in reply which shall be confined to matters strictly in reply to the proprietor's evidence, and shall send a copy thereof to the proprietor.(8) No further evidence may be filed, except that, in relation to any proceedings before her, the registrar may at any time if she thinks fit give leave to either party to file such evidence upon such terms as she may think fit.(9) Upon completion of the evidence the registrar shall request the parties to state by notice to her in writing whether they wish to be heard; if any party requests to be heard the registrar shall send to the parties notice of a date for the hearing.(10) When the registrar has made a decision on the application she shall send the parties to the proceedings written notice of it, stating the reasons for her decision; and for the purposes of any appeal against the registrar's decision the date when the notice of the decision is sent shall be taken to be the date of the decision.” a) two copies of evidence of use made of the mark; or(b) reasons for non-use of the mark. Where such a notice and counter-statement, and evidence of use of the mark or reasons for non-use of the mark, are filed within the prescribed period, the registrar shall send a copy of the Form TM8 and the counter-statement, and the evidence of use of the mark or the reasons for non-use of the mark, to the applicant.[3]Although the Registrar has power under TMR rule 68(1) to extend the time limits prescribed by the TMR, certain specified time limits are expressly excluded by TMR rule 68(3). These include the prescribed time for filing a counter-statement under rule 31(2). The consequence of this is that a failure to serve the counter-statement or the evidence within the three-month period will lead automatically to the operation of rule 31(3). One of the issues on this appeal concerns the nature of the Registrar’s power to treat the proprietor’s opposition to the application as having been withdrawn, and whether it was properly exercised (if at all) in this case. This arises in the context of a more general challenge to the decision of the Registrar made on 7th May 2004 to revoke registration of the Appellant’s mark.

The Factual Background

[4]The Appellant (Mr Lowden) is the registered proprietor of UK Trade Mark No. 1588546 for the LOWDEN device. The mark was registered with effect from 20th October 1994 in respect of “Guitars; acoustic guitars; parts and fittings for all the aforesaid goods; all included in Class 15”. On 31st December 2003 the Respondent company (“the Company”) filed an application in the UK Trade Marks Registry alleging non-use under s.46(1)(a) and s.46(1)(b). The Statement of Groundswas in these terms “1. UK Trade Mark Registration No. 1588546, LOWDEN (figurative) (series of two) was registered on October 20, 1994, in Class 15 for, “Guitars; acoustic guitars; parts and fittings for all the aforesaid goods; all included in Class 15,” in the name of George Lowden. 2. The applicant is the manufacturer of guitars and was made aware of the above registration in or around November, 2003. The applicant, through its own knowledge of, and research into, the registered proprietor’s business is aware that there has been no genuine use of the above Trade Mark by the registered proprietor, or with his consent, for the goods in the specification, within a period of five years from the completion of the registration procedure, or within any continuous period of five years after registration of the Trade Mark. The said acts are contrary to the provisions of s46(1)(a) and s46(1)(b) of the Trade Marks Act 1994. 3. The applicant therefore asks for revocation of UK Registration No. 1588546 from October 20 1999, for all the goods in the specification and asks for an award of costs in its favour.”[5]In a letter of 9th January 2004 the Registry proceeded to inform Mr Lowden’s trade mark attorneys (Ansons) of the application for revocation, a copy of which was enclosed. This is a standard form letter which reminds the addressee in terms that if the proprietor of the mark wishes to defend the registration, then the enclosed Form TM8, together with a counter-statement and either two copies of the evidence of the use of the mark or alternatively the reasons for non-use, should be completed and received by the Registrar on or before 9th April 2004. The letter therefore recites the requirements of TMR rule 31(2). Under s.100 of the 1994 Act the burden is of course on the registered proprietor to show what use has been made of the mark.[6]The letter also contained the following paragraph:
“If you do not file the aforementioned papers within the three month period, (a period which cannot be extended), the application for revocation will be granted, under the terms of Rule 31(3) of the Trade Marks Rules 2000, and the mark will be removed from the register.”
Notwithstanding this warning, Ansons failed to comply with the 9th April deadline. The Form TM8 and the counter-statement were sent to the Registry by fax on 15th April. So far as I am aware, no evidence was filed. In the counter-statement Mr Lowden alleges use of the mark under a licence agreement with the Company which subsisted until February 2003 and only terminated as part of the settlement of court proceedings between the parties. The counter-statement alleged, on the basis of these facts, that the mark had been used within the last five years and asked for the application for revocation to be dismissed.[7]Although the counter-statement was served out of time, the Registry was clearly on notice as of 15th April that Mr Lowden did wish to oppose the application for revocation. It responded, however, to the receipt of the Form TM8 and the counter-statement by a letter dated 20th April 2004 from Mr Lewis, a casework examiner, which again was a standard form letter. After reciting that the counter-statement had been received out of time, the letter concluded as follows:
“The Form TM8 and counter-statement were received outside the period allowed and therefore the opposition to the application for revocation has been deemed withdrawn.”
The Registrar subsequently informed Ansons on 7th May 2004 of the decision made by the Hearing Officer (Mr Graham Attfield) to revoke the registration with effect from 20th October 1999, as requested in the Company’s application. The written decision states the reasons for the Hearing Officer’s decision to be that:
“The Registered Proprietor did not file a counterstatement within the three months specified by Rule 31(2), of the Trade Marks Rules 2000 and therefore no reasons have been advanced why revocation should not follow,”
[8]There are two postscripts to add to that chronology of events. Ansons’ incompetence did not end with their failure to lodge Form TM8 and the counter-statement on time. They also failed to file a notice of appeal within the time allowed, but on 29th July 2004 Pumfrey J granted an extension of time. The Company’s trade mark attorneys also woke up to the fact that they were not entitled under s.46(1) to seek revocation of the mark from a date earlier than 20th October 2000. By an extraordinary coincidence, the date on which the application for registration was filed and the date on which the registration was completed were exactly one year apart. Registration was applied for on 20th October 1994 and completed on 20th October 1995. Registration therefore took effect under s.40 of the 1994 Act as of 20th October 1994, but for the purposes of s.46(1)(a) the starting date for the five-year period of non-use was 20th October 1995. Revocation could not therefore have been ordered from a date earlier than 20th October 2000. The error in the choice of date was pointed out to the Registry in a letter from the Company’s trade mark attorneys sent on 23rd April 2004, in which they suggested that revocation might take effect from 20th October 2000 if the Registrar deemed that to be more appropriate. Notwithstanding this, the Hearing Officer proceeded to direct revocation from the 20th October 1999 date. There is before me a Respondent’s Notice by which the Company seeks a variation of that order (and, if necessary, an amendment of the Statement of Grounds) in order to substitute the year 2000 for the year 1999. The notice proceeds on two bases: i) that the insertion of the wrong date was an obvious error of the type which in court proceedings could be corrected under the slip rule; and ii) that on a proper reading of the Statement of Grounds revocation from the 2000 date was part of the claim and can been ordered on this appeal in substitution for the order made by the Hearing Officer.

The Grounds of Appeal

[9]Mr Malynicz for Mr Lowden bases his appeal on three main grounds. He says that the Hearing Officer’s decision was flawed in three material respects, each of which requires it to be set aside. The grounds are that: i) the Hearing Officer purported to revoke the mark from a date earlier than any date which was permissible under s.46(1)(a). The order is therefore one which the Registrar had no jurisdiction to make; ii) the decision of 7th May was taken without exercising the discretion which was required under TMR rule 31(3); and iii) the decision was taken without giving Mr Lowden an opportunity to be heard, contrary to TMR rule 54.

Wrong Date

[10]It is common ground on this appeal (for the reasons outlined above) that the Registrar had no power to order revocation of the mark with effect from 20th October 1999. The real dispute is as to the consequences which follow in this case. The first ground set out in the Respondent’s Notice is based on the premise that the insertion of the 20th October 1999 date in the Company’s Statement of Grounds was little more than a clerical or typographical error, and Mr Hill on behalf of the Company has invited me to correct the date in the Hearing Officer’s decision and in his order, on a basis akin to the slip rule. He relies on paragraph 2 of the Statement of Grounds, which he says supports revocation from a legitimate date (i.e. 20th October 2000) by its reference to non-use within a period of five years “from the completion of the registration procedure”. The Court can therefore, he says, correct the date without setting the order aside or directing a re-hearing.[11]There is no evidence from the Company’s trade mark attorneys as to how the wrong date came to be inserted in paragraph 3 of the Statement of Grounds, and Mr Hill’s argument is based solely on the fact that paragraphs 2 and 3 are, on one reading, in conflict with each other. The difficulty, however about this argument is that it does not follow from the apparent inconsistency between the two paragraphs that the use of the 1999 date was an accidental or clerical error, as opposed to a misunderstanding as to which of two possible dates was the correct one for the purposes of s.46. More to the point, however, the letter of 23rd April 2004 from the Company’s trade mark agents to the Registry, which sought to persuade the Registrar to order revocation from 20th October 2000, did not refer to the 1999 date as being the product of such an error. The point it made was that the 1999 date was earlier than the expiration of five years from the date of registration. Notwithstanding, but in the knowledge of this, the Hearing Officer went ahead and directed revocation from the 1999 date. Not only was this a legal impossibility, but the reasons why it was such were made known to the Hearing Officer prior to the decision being made. In no way was the inclusion of the 1999 date in his decision and order an accidental one of the kind which in my judgment would be required for it to be remediable by the application of the slip rule under CPR 40.12. This was an error of law which can only be corrected substantively on an appeal.[12]The other argument raised in the Respondent’s Notice is that notwithstanding the claim in paragraph 3 of the Statement of Grounds for revocation from 20th October 1999, it was open to the Registrar, on the Statement of Grounds as they stood, to order revocation from 20th October 2000, and that under s.46(6) the Registrar is given a wide discretion as to the date chosen, provided of course that it is no earlier than five years from the completion of registration. I was invited by Mr Hill on this basis to substitute for the Registrar’s order an order for revocation of the LOWDEN mark from 20th October 2000.[13]Although raised by way of Respondent’s Notice, this is in substance a cross-appeal. Mr Hill accepts that the Registrar’s order as made cannot stand, but seeks to maintain an order for revocation in his client’s favour from a permissible date. It therefore produces a measure of agreement that the appeal against the order of 7th May should be allowed, but raises the issue of whether I should dismiss the application for revocation or make an order on it which, on Mr Hill’s argument, could and should have been made by the Hearing Officer.[14]For the Company to be entitled to an order for revocation from 20th October 2000 it seems to me that I have to be satisfied not only that the Hearing Officer was wrong in the order he made, but that he declined to make the order which Mr Hill now seeks. Although it is possible to construe paragraph 2 of the Statement of Grounds as raising a number of possible dates for revocation, the only one which was in terms asked for was 20th October 1999. It seems to me to be difficult to criticise the Hearing Officer for treating that as being what the Company was applying for, or for failing to read paragraph 3 of the Statement of Grounds as containing some implied alternative prayer for relief from a later permissible date. Whilst the Hearing Officer was obviously in error in ordering revocation from the 1999 date, that was undoubtedly the application he was faced with.[15]I do not therefore accept that the Statement of Grounds, on fair reading, sought revocation from any date other than 20th October 1999, and if the Company wished to seek in the alternative an order for revocation from 20th October 2000 or any later date, that is something which should have been expressly pleaded in the Statement of Grounds. The consequence of this is that the order sought in the Respondent’s Notice cannot be made unless permission is first sought and obtained for the amendment of the Statement of Grounds. That relief is sought in the Respondent’s Notice, but it is not an order which I can or should make on this appeal in order to preserve for the Company the benefit of the order for revocation. In order to explain why this is so, it is necessary for me to say something about the power to amend proceedings in the Registry. However, before I do that, it is convenient to deal with the remaining grounds of appeal.

Discretion

[16]TMR rule 31(3), which governed the situation once there was late filing of the Form TM8 and the counter-statement, provides that the Registrar may in such circumstances treat the proprietor’s opposition to the application for revocation as having been withdrawn. The use of the word “may” is to be contrasted with the provisions (e.g.) of rule 31(5), which deem the revocation application to be withdrawn if no evidence is filed in support of it. Again, by way of contrast, rule 13(6) in relation to opposition proceedings deems the application for registration to be withdrawn if a Form TM8 and counter-statement are not filed in time.[17]It seems to me that rule 31(3) does give the Registrar a discretion as to whether or not to treat the proprietor’s opposition as withdrawn, and Mr Hill did not really oppose this construction of the rule. The real dispute centres on the scope of the discretion which rule 31(3) confers. Mr Tappin, who appeared on behalf of the Registrar on this appeal, accepted that the Hearing Officer did not appreciate that he had a discretion to exercise under rule 31(3) at all and had not therefore exercised such a discretion in this case. Consequently no opportunity to be heard was given to Mr Lowden under rule 54. The Registrar therefore submits that the appeal should be allowed and the matter remitted to him for reconsideration following (if requested) a hearing. However, for the Court to remit the matter back to the Registrar, I must first be satisfied that there is a discretion vested in him under rule 31(3) which could have been exercised in the circumstances of this case, other than by treating the proprietor’s opposition as withdrawn. Mr Hill has submitted that any discretion vested in the Registrar is narrow and could only be exercised in favour of a proprietor in two possible types of case: i) when the failure relates only to the filing of evidence rather than the counter-statement; and ii) when the applicant’s Statement of Grounds does not contain any valid grounds for revocation.[18]It is important to bear in mind that there were two decisions which the Registrar had to make. The first was to determine under rule 31(3) whether or not to treat Mr Lowden’s opposition as withdrawn, in the light of the late filing of the Form TM8 and the counter-statement. Over and above that, and in any event, the Hearing Officer had also to determine whether or not to accede to the application for revocation. The first decision was made and communicated in the letter to Ansons of 20th April 2004. The second is contained in the written decision of 7th May. It is clear from that decision that the Hearing Officer thought he had no option but to order revocation, in the light of Mr Lowden’s failure to produce any admissible reasons to the contrary. He must therefore have taken the view that in reaching his decision to revoke the registration he was not entitled to take into account (still less to decide) the issues raised in the counter-statement which had been received late, on 15th April. This appeal is against the decision and order made on 7th May 2004 rather than the earlier decision under rule 31(3), but the decision to revoke is said to be vitiated by the Hearing Officer’s prior failure to exercise the rule 31(3) discretion and his decision to treat the opposition to the application as withdrawn without first considering whether an alternative course was available. All parties to this appeal have proceeded on the basis that it is open to me to consider and review not only the decision of 7th May but also that of 20th April.[19]There is clearly a powerful logic in the argument that if the TMR do not permit counter-statements to be filed outside the three-month period, then any further consideration of the application for revocation has to proceed on the basis that the proprietor has not exercised his right to dispute the factual basis of the application. Although it was suggested to me that the express removal from TMR rule 68 of the Registrar’s power to extend the time limit under rule 31(2) was for administrative reasons (e.g. to speed up applications in the Registry), it has more fundamental consequences than that. It means that the opportunity given to the proprietor under rule 31(2) to file grounds of opposition (“the proprietor may”) can only validly be exercised (if at all) within the three-month period prescribed. The Registrar has no power to permit a counter-statement to be filed outside that period, and this has two obvious consequences. The first is that the Registrar may be entitled to treat the application for revocation as unopposed: rule 31(3). The second is that the provisions for the service by the applicant of his evidence in support of the application never come into operation. Rule 31(4) only applies if the Form TM8 and counter-statement are sent by the Registrar to the applicant for revocation. This will not occur unless those documents “are filed within the prescribed period”: see rule 31(2). Therefore although rule 31(4) does not itself specify that the counter-statement should have been served in time, that condition is spelt out in rule 31(2), on which the operation of rule 31(4) and the subsequent procedural steps depend. Once the three-month time limit is missed, the remaining provisions of rule 31 will therefore drop away, except for rule 31(3). The Registrar is left to decide whether to treat the application as unopposed. If the Registrar decides to treat the application as unopposed, then only rule 31(10) will remain of any application. If the application continues as an opposed application, both sub-rules (9) and (10) will apply. Sub-rule (8) deals only with further evidence and has no application in a case where the provisions of sub-rules (4) to (7) never take effect.[20]The argument on this part of the appeal has therefore centred on what factors are relevant to a determination under rule 31(3) and how wide the power is. There is an obvious curiosity about the provisions of rule 31(3). Even Mr Hill accepts that the concept of treating the proprietor’s opposition as withdrawn carries with it the implication, as a matter of language, that opposition to the application is already in place. If the counter-statement is not filed within the mandatory three-month period, then that, he says, is not the case. No opposition exists. This point may, however, be over-subtle in the context of the TMR. At the end of the three-month period the Registrar may be faced with two possible situations. There may be no counter-statement or evidence at all filed on behalf of the proprietor. Alternatively there may be a filing which is late. The use of the word “withdrawn” is obviously intended to cover both possibilities. The difficult question is whether the Registrar, in the case of a late filing, may nevertheless treat the proprietor’s opposition as continuing and in effect resuscitate a contested application.[21]There is no authority which binds me on this point, but the practice of the Registry (which was not followed in this case) is set out in a decision of the Hearing Officer (Mr Mike Knight) in Firetrace Trade Mark [2002] RPC 15. That was an application for revocation under s.46(1)(c) and (d), which was governed by TMR rule 32. This contains provisions which are materially indistinguishable from those of rule 31, except that the period allowed for the filing of the proprietor’s counter-statement is six weeks rather than three months. As in this case, the proprietor’s trade mark agents failed to file the Form TM8 and counter-statement within the prescribed period. They were filed a week late, with the request that they be accepted and that the proprietor be allowed to file evidence in opposition. The Hearing Officer decided that he had no discretion to extend time for the filing of the counter-statement, but did not consider that the registration could simply be revoked. At page 345 he said this: “16 Both counsel also agreed that irrespective of my findings in relation to what (if any) further part the proprietors may play in these proceedings, the registration can not simply be revoked or declared invalid. The basis of this submission is the presumption of validity contained in section 72 of the Act. This section reads as follows: "72. In all legal proceedings relating to a registered trade mark (including proceedings for rectification of the register) the registration of a person as proprietor of a trade mark shall be prima facie evidence of the validity of the original registration and of any subsequent assignment or other transmission of it." 17 In this respect I agree with counsel's view. It is not sufficient to simply allege that a registration offends either section 46 or 47 of the Act without doing more to prove that the allegation has substance. That said, when an application for revocation (other than non-use) or invalidation is made and the registered proprietors choose not to respond to such a request, I do not think that it is necessary for the applicants in those circumstances to have to fully substantiate their allegations beyond providing evidence which supports a prima facie case. In reaching this conclusion I am mindful of the decision in the Fontaine Converting Works Incorporated's Patent (Revocation) [1959] R.P.C. 72 (at page 73) where the Assistant Comptroller stated: "in the case before me the patentee has made no response whatever to the case made by the applicants for revocation although he has been allowed very generous time in which to do so. He has not even asked the Comptroller to decide the case in his absence: I must read the agent's letter of 21 November as saying no more than that in the absence of instructions the agents can give no assistance in the prosecution of this case. In these circumstances I must hold that the Comptroller has no duty to consider the merits of the case. If he were to attempt to do so, he must give the applicants' for revocation an opportunity to develop their case, by the appointment of a hearing or otherwise. It is not reasonable that they should be put to this trouble and expense, and that official time should be wasted, on a case which the patentees have, in effect, allowed to go by default. And it would be intolerable that the interests of the applicants for revocation and the public in general should be prejudiced for an indefinite period by the refusal of the patentees to enter any defence in the action brought against them, whether the reason be that they can see no defence, or that they wish to delay a decision on the case as long as possible". 18 The position under the 1994 Trade Marks Act is somewhat different. As mentioned above section 72 of the Act does provide that registration of a trade mark is considered prima facie evidence of its validity. As such, even in revocation (other than non-use) and invalidation proceedings where the proprietor does not contest the application, there is in my view still an onus on the applicants to make out at least a prima facie case.” "72. In all legal proceedings relating to a registered trade mark (including proceedings for rectification of the register) the registration of a person as proprietor of a trade mark shall be prima facie evidence of the validity of the original registration and of any subsequent assignment or other transmission of it." "in the case before me the patentee has made no response whatever to the case made by the applicants for revocation although he has been allowed very generous time in which to do so. He has not even asked the Comptroller to decide the case in his absence: I must read the agent's letter of 21 November as saying no more than that in the absence of instructions the agents can give no assistance in the prosecution of this case. In these circumstances I must hold that the Comptroller has no duty to consider the merits of the case. If he were to attempt to do so, he must give the applicants' for revocation an opportunity to develop their case, by the appointment of a hearing or otherwise. It is not reasonable that they should be put to this trouble and expense, and that official time should be wasted, on a case which the patentees have, in effect, allowed to go by default. And it would be intolerable that the interests of the applicants for revocation and the public in general should be prejudiced for an indefinite period by the refusal of the patentees to enter any defence in the action brought against them, whether the reason be that they can see no defence, or that they wish to delay a decision on the case as long as possible".[22]The provisions of s.72 of the 1994 Act which underpin this part of Mr Knight’s reasoning have no application (as he recognised) to a case of revocation on grounds of non-use where the validity of the registration is not in issue. Mr Malynicz accepts this. It certainly looks from the last section of the passage I have quoted that the Hearing Officer did not regard it as incumbent on the Registry to require a case of non-use to be proved, in the absence of a properly filed counter-statement or evidence in opposition to the application. That would be consistent with s.100 of the 1994 Act. His decision in Firetrace was therefore premised on the basis that that there had to be a judicial determination of the issue of validity, and it has to be considered in that light. But the passage which I have been invited to follow is at paragraphs 20 to 21 of the decision: “20 In my view the position is not quite as straightforward as Mr Cuddigan suggests. If rules 32(3) and 33(3) had within them the word "shall" in the context of what the registrar had to do in the event of the registered proprietor failing to file a notice and counterstatement then there would have been no doubt that in default of doing so, the registered proprietors would have no further role to play in the proceedings. Any opposition they may have had to the application for revocation (or a declaration of invalidity) would have to be treated as withdrawn. But the wording of rules 32(3) and 33(3) and the use of the word "may" in those rules, in my view, clearly confers on the registrar a discretion. When then should it be exercised? Given the way in which the rules are written the legislature envisaged that a registered proprietor sufficiently concerned to defend their registration against attack should have a fixed period in which to respond to a notice of an application for revocation or a declaration of invalidity. This, presumably, provides a degree of certainty for all concerned. Therefore, any failure by the registered proprietors to conform with the request to file a response within an unextendable deadline must be regarded as a deliberate action, unless it can be shown that that was not the case. It is not appropriate to provide examples but before the registrar can be persuaded that the registered proprietors should be allowed to continue as a party to the proceedings there must be a very good explanation for their failure to date and therefore for the registrar to exercise her discretion in their favour. 21 So, is this a situation where this discretion should be exercised favourably in the registered proprietors favour? It is clear from the various correspondence referred to above that it was always the registered proprietors intention to defend this registration. It was a number of unrelated incidents and circumstances not within their direct control that led to the forms TM8 and counter-statements not being filed in time. It seems to me that the responsibility for the failure by the registered proprietors to file their responses to these actions by the applicants for revocation and declaration of invalidity lies directly with their trade mark attorneys. Their assistant's failure and the lack of supervision/control of that person together with the loss of files during refurbishment suggest a set of circumstances which, whatever might be said about the organisation or otherwise of the office of the trade marks attorneys, should not be laid at the door of the registered proprietors. The answer to the question therefore is yes. The registered proprietors always had the intention to defend their registration and the gross failure of the trade marks attorneys on their behalf should not prevent them from doing so. In reaching that view I have had regard also to the extent of the delay which occurred and the potential prejudice to the applicants. In this regard I have noted Mr Cuddigan's comments to the effect that the applicants suffered no prejudice. I also bear in mind that the delay amounted to five working days. In summary therefore I agree with Mr Malynicz that the discretion under rules 32(3) and 33(3) must be exercised sparingly but that the case before me is such a case, where the registered proprietors should be allowed to continue as a party to the proceedings despite not having filed the required forms TM8 and counterstatements. In the circumstances I am prepared to exercise my discretion under rules 32(3) and 33(3) to allow the registered proprietors to become a party to these proceedings. In reaching this conclusion I should record that I do not consider that I have fallen foul of the comments of Pumfrey J. in Pharmedica GmbH's Trade Mark Application case. I am not allowing an extension of time to an unextendable time limit, I am simply exercising a discretion as provided for in the rules. The Hearing Officer went on to direct under rule 57 that the registered proprietor should within one month provide to the applicants by way of letter an outline of the basis of their defence to the application, and if that was done, then the evidence already filed by them out of time would be admitted to the proceedings. The applicants would then be entitled to file evidence in answer, in accordance with TMR rule 32(4).[23]I have considerable difficulties with the interpretation of the rules contained in paragraph 20 of Mr Knight’s decision and I am not prepared to extend it to an application under TMR rule 31. The exclusion of the power to extend time is obviously capable of working injustice and ought to be reconsidered. But although one therefore has sympathies with the approach which the Hearing Officer took, it did in substance involve him in granting an extension of time for the service of the grounds of opposition. There is no procedure under the rules for the service of objections by way of letter, and although the Registrar clearly has a wide discretion as to how to conduct any hearings in the Registry, that does not entitle him, in my judgment, to adopt procedures which are in direct contradiction to the express provisions of the TMR. That was recognised by Pumfrey J in his decision in Pharmedica GMBH’s Trade Mark Application [2000] RPC 536, in which, at page 541, the learned

Judge says this:

“Notwithstanding the fact that the registrar is, like the county court, a tribunal which is established by statute, I have no doubt that the registrar has the power to regulate the procedure before her in such a way that she neither creates a substantive jurisdiction where none existed, nor exercises that power in a manner inconsistent with the express provisions conferring jurisdiction upon her.”
[24]Rule 31(2) requires the counter-statement and (unlike under rule 32(2)) any evidence to be filed within three months. There is no power to extend that period of time (at least in relation to the service of the counter-statement) and if the time limit is not complied with, then, as I interpret rule 31(2), there is no power for the Registrar to initiate the evidential process set out in rules 31(4) to (8). It seems to me that to adopt the procedure in Firetrace is to circumvent the express provisions of rule 68(3). Questions of whether the proprietor (rather than his agents) should be penalised in relation to a late filing of documents are classic questions for a tribunal to address, when being asked to grant an extension of time. In this case there is no power to extend time and it is not open to the Registrar to invent one.[25]I do not therefore accept that it was open to the Registrar to create some alternative procedure for use in this case which entitled him to consider whether he should allow the application to continue as an opposed application by admitting factual evidence. This is one of the directions which Mr Malynicz seeks from me, in the event that his appeal is successful. The discretion created under rule 31(3) has to be exercised on the basis that the proprietor is not entitled to defend the factual basis of the application. The Registrar must therefore consider whether the application is one which will not necessarily be granted, even if the alleged non-use is not challenged. For this purpose I think that the Registrar is entitled to look at the material filed out of time by the proprietor and to rely on it so far as it identifies reasons which could be pursued even in the light of non-use. In practice this is likely to limit any continued opposition in most cases to defects in the application which are apparent from the Statement of Grounds. The Registrar’s consideration of these issues will entitle the registered proprietor to a hearing under rule 54, both in relation to the rule 31(3) decision and also in relation to the subsequent decision to be made on the application to revoke. If the proprietor is able at the first hearing to identify matters of the kind I have described, then the proper course is likely to be that the application will continue to be treated as opposed and he will be represented at any subsequent hearing at which a decision is taken whether or not to revoke registration.[26]In the present case Mr Lowden was not entitled to preserve his opposition to the application based on the disputed facts about the licence arrangements. On my construction of the TMR the Registrar could not have allowed those matters to be raised, in view of the late filing. It is not therefore open to Mr Lowden now to contend that, had a hearing taken place, he might have persuaded the Hearing Officer on behalf of the Registrar to exercise his discretion differently on that account. But he would have been able at a hearing to have taken the point about the 1999 date. The Hearing Officer would, in my judgment, have been bound to allow the application to continue as an opposed application on those grounds, and at any subsequent hearing could only have granted the application if the Company was able to substitute the 2000 date for the 1999 one in its Statement of Grounds.[27]This brings me back to the question of whether the Registrar can give permission to amend. There is no express power contained in the TMR for the amendment of applications which are proceeding in the Registry. The Registrar has, however, issued a Practice Notice (TPN 4/2000) which sets out the approach of the Registry to the amendment of proceedings both prior to and after the despatch by the Registry of the application and the Statement of Grounds. Paragraph 22 of the Practice Notice is in these terms:
“As parties will be expected to file focussed statements of case and counter-statements, the Trade Marks Registry will consider requests to amend these documents later in the proceedings. Amendments may include adding or removing a ground of opposition/revocation or invalidity or correcting information contained therein. If an amendment becomes necessary parties should seek leave to make the amendment at the earliest opportunity. When seeking leave to amend full details of the amendment together with the reasons for the amendment should be submitted. Whilst each request to amend will be considered on its merits the Registry will aim to give favourable consideration to such requests on the basis that it is likely to avoid a multiplicity of proceedings and thus help resolve the dispute between the parties quickly and at less cost. If the amendment requires the other party to file an amended counter-statement or additional evidence, an award of costs to cover this may be made.”
[28]For the purposes of this appeal I am prepared to accept that the Registrar has power (as part of his control of proceedings in the Registry) to permit amendments to applications, provided that the power is not exercised in a way which contradicts or is inconsistent with the TMR or the provisions of the 1994 Act. The Practice Notice which I have quoted from does not, however, deal with the position in relation to amendments which arises when the proprietor has failed to file the counter-statement within the three months allowed by rule 31(2) and the Registrar either has exercised or is being invited to exercise his powers under rule 31(3). It seems to me that in a case where the registered proprietor has in effect been debarred from defending the application for revocation on its merits by virtue of the late filing of the counter-statement, it is not possible for the Registrar to grant permission to amend without starting time running again for the service of the counter-statement under rule 31(2). This is because the amendment of the Statement of Grounds triggers an obligation on the part of the Registrar under rule 31(1) to send a copy of the amended statement to the proprietor. This will then bring rule 31(2) into operation in relation to the amended statement and allow the proprietor to serve a counter-statement in the three-month period, even when he has failed to do so in relation to the Statement of Grounds originally served. The Registrar’s current practice is to allow less than three months for the service of an amended counter-statement in such circumstances, but I do not believe that this is compatible with the provisions of rule 31(2), although a shorter period could be allowed if the respondent consented to it. Whatever period is allowed, it is not therefore open to me to grant permission to the Company to amend its Statement of Grounds to change 1999 to 2000 without allowing Mr Lowden the opportunity of serving his counter-statement in time. If (as I assume) that will be done, then no order for revocation can be made without a hearing on the merits.[29]It follows from all this that the appeal must be allowed and the order of 7th May set aside. The only real issue is whether I should remit the application to the Registrar to decide whether to permit an amendment of the date (with the consequences I have outlined) or whether the right course is simply to dismiss the application.[30]I was initially inclined to take the latter course, on the basis that the limited nature of the Registrar’s discretion under rule 31(3) and the current form of the Statement of Grounds left the Hearing Officer on 7th May with only one real question to decide, which was the issue of the correct date. That issue was decided incorrectly by him and has been decided by me on this appeal. But to take that course would be to deprive the Company of the opportunity which it would have been given (had the Hearing Officer directed a hearing about the 1999 date) of applying for permission to amend so as to pursue the application for revocation on its merits at a contested hearing on the question of non-use. That application has now been made in the Respondent’s Notice, but in reality it was flagged up in the letter which the Company’s trade mark agents wrote on 23rd April 2004. What the Hearing Officer should have done was to have treated that as an application to amend the Statement of Grounds and dealt with it at a hearing prior to any decision being made on the application for revocation. For the reasons stated earlier the Hearing Officer could only have acceded to the application for permission to amend on the basis that three months ran again for service of the counter-statement, and had that course been taken, the issues canvassed on this appeal would not have arisen.[31]The proper order therefore is that the appeal will be allowed and the order of 7th May 2004 set aside. I will remit the revocation application to the Registrar to determine the Company’s application for amendment of its Statement of Grounds. If that application is not allowed, then the application for revocation will fall to be dismissed. If permission to amend is granted, it will (for the reasons stated) lead to the service of the amended Statement of Grounds on Mr Lowden and to time running again under rule 31(2). I will also direct that the Register be rectified in the meantime so as to remove the entry indicating that registration of the LOWDEN mark has been revoked.