“Application for invalidation: filing of application and counter-statement; section 47 (Forms TM8 & TM26(I)) 41.(1) An application to the registrar for a declaration of invalidity under section 47 shall be filed on Form TM26(I) and shall include a statement of the grounds on which the application is made and be accompanied by a statement of truth. … (5) The registrar shall send a copy of Form TM26(I) and the statement of the grounds on which the application is made to the proprietor. (6) The proprietor shall, within two months of the date on which a copy of Form TM26(I) and the statement was sent by the registrar, file a Form TM8, which shall include a counter-statement, otherwise the registrar may treat the proprietor as not opposing the application and registration of the mark shall, unless the registrar otherwise directs, be declared invalid. … Setting aside cancellation of application or revocation or invalidation of registration: (Form TM29) 43.(1) This rule applies where – … (c) the registration of a mark is declared invalid under rule 41(6), and … the proprietor … claims that the decision of the registrar to … declare the mark invalid … (‘the original decision’) should be set aside on the grounds set out in paragraph (3). (2) Where this rule applies, …. the proprietor shall, within a period of six months beginning with the date that the … register was amended to reflect the … declaration of invalidity …, file an application on Form TM29 to set aside the decision of the registrar and shall include evidence in support of the application and shall copy the form and the evidence to the other party to the original proceedings under the rules referred to in paragraph (1). (3) Where … the proprietor demonstrates to the reasonable satisfaction of the registrar that the failure to file Form TM8 within the period specified in the rules referred to in paragraph (1) was due to a failure to receive … Form TM26(I) …, the original decision may be set aside on such terms and conditions as the registrar thinks fit. (4) In considering whether to set aside the original decision the matters to which the registrar must have regard include whether the person seeking to set aside the decision made an application to do so promptly upon becoming aware of the original decision and any prejudice which may be caused to the other party to the original proceedings if the original decision were to be set aside. Decisions subject to appeal; section 76(1) 70.(1) Except as otherwise expressly provided by these Rules an appeal lies from any decision of the registrar made under these Rules relating to a dispute between two or more parties in connection with a trade mark, including a decision which terminates the proceedings as regards one of the parties or a decision awarding costs to any party (‘a final decision’) or a decision which is made at any point in the proceedings prior to a final decision (‘an interim decision’). … Alteration of time limits (Form TM9) 77.(1) Subject to paragraphs (4) and (5), the registrar may, at the request of the person or party concerned or at the registrar’s own initiative extend a time or period prescribed by these Rules or a time or period specified by the registrar for doing any act and any extension under this paragraph shall be made subject to such conditions as the registrar may direct. (2) A request for extension under this rule may be made before or after the time or period in question has expired and shall be made – (a) where the application for registration has not been published and the request for an extension relates to a time or period other than one specified under rule 13 and is made before the time or period in question has expired, in writing; and (b) in any other case, on Form TM9. (3) Where an extension under paragraph (1) is requested in relation to proceedings before the registrar, the party seeking the extension shall send a copy of the request to every other person who is a party to the proceedings. (4) The registrar shall extend a flexible time limit, except a time or period which applies in relation to proceedings before the registrar or the filing of an appeal to the Appointed Person under rule 71, where – (a) the request for extension is made before the end of the period of two months beginning immediately after the data the relevant time or period expired; and (b) no previous request has been made under this paragraph. (5) A time limit listed in Schedule 1 (whether it has already expired or not) may be extended under paragraph (1) if, and only if – (a) the irregularity or prospective irregularity is attributable, wholly or in part, to a default, omission or other error by the registrar, the Office or the International Bureau; and (b) it appears to the registrar that the irregularity should be rectified. (6) In this rule – ‘flexible time limit’ means – (a) A time or period prescribed by these Rules, except a time or period prescribed by the rules listed in Schedule 1; or (b) A time or period specified by the registrar for doing any act or taking any proceedings; and “proceedings before the registrar” means any dispute between two or more parties relating to a matter before the registrar in connection with a trade mark. Schedule 1 … rule 41(6) (counter-statement for invalidity) rule 43(2) (setting aside … invalidation of registration) … rule 77(4) (period for making a retrospective request to extend a flexible time period).”
“Cheese made from sheep’s and/or goat’s milk; cheese made from blends of cow’s milk; all included in Class 29.”
“The TM8 and counterstatement must be received on or before26 March 2018 . … In accordance with rule 41(6) if the TM8(N) and counter-statement are not filed within this period, (a period which cannot be extended), the registration of the mark shall, unless the register otherwise directs, be declared invalid in whole or part.”
“The official letter dated26 January 2018 informed you that if you wished to continue with your registration you should file the Form TM8 and counterstatement on or before26 March 2018 . As no TM8 and counterstatement have been filed within the time period set, Rule 41 (6) applies. Rule 41 (6) states that: ‘… Otherwise the registrar may treat the proprietor as not opposing the application and registration of the mark shall, unless the registrar otherwise directs, be declared invalid.’ The registry is minded to treat the proprietor as not opposing the application for invalidation and declare the registration as invalid as no defence has been filed within the prescribed period. If you disagree with the preliminary view you must provide full written reasons and request a hearing on, or before,19 April 2018 . This must be accompanied by a witness statement setting out the reasons as to why the TM8 and counterstatement are being filed outside of the prescribed period. If no response is received the registry will proceed to issue a short decision on the issue of failure to comply with the Rules governing the filing of a defence.”
“Under the provisions of the rule, the Registrar can exercise discretion. In this case, no reasons have been given why I should exercise this discretion in favour of the registered proprietor and I therefore decline to do so. As the registered proprietor has not responded to the allegations made, I am prepared to infer from this that they are admitted. Therefore, in accordance with Section 47(6) of the Act, the registration is declared invalid and I direct that it be removed from the register …”
“.. I would point out firstly contrary to what is said on Form TM9R, the period for filing a Form TM8 is NOT an extendable period (see Schedule 1 to theTrade Mark Rules 2008 ). The fact that a decision has been issued in this case declaring the above mark to be invalid means the Registry is now functus officio. If the registered proprietor wants an opportunity to defend the registration its only course of action is to appeal the Registry’s decision to declare the registration invalid for lack of a defence. The period allowed for any appeal remains set for30 May 2018 .”
“Functus officio means no more than that a judicial, ministerial or administrative actor has performed a function in circumstances where there is no power to revoke or modify it. It is a Latin tag still in universal use and usually abbreviated to the short statement that someone is ‘functus’.”
“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 substantial jurisdiction where none existed, nor exercises that power in a manner inconsistent with the express provisions conferring jurisdiction upon her.”
“65. Having decided that there is a general discretion in the registrar, it would be inappropriate to set out factors which would circumscribe the exercise of that discretion. Plainly, however, the discretion must be exercised on the premise that the time limit in r.33(6) is inextensible, and that there must be compelling reasons for the proprietor to be treated as opposing the application, notwithstanding his failure to comply with an inextensible time limit. ... 67. The factors that are, in my judgment, relevant to the exercise of the discretion in this case include: (1) The circumstances relating to the missing of the deadline including reasons why it was missed and the extent to which it was missed. (2) The nature of the applicant's allegations in its statement of grounds. (3) The consequences of treating the proprietor as opposing or not opposing the application. (4) Any prejudice caused to the applicant by the delay. (5) Any other relevant considerations, such as the existence of related proceedings between the same parties.” (1) The circumstances relating to the missing of the deadline including reasons why it was missed and the extent to which it was missed. (2) The nature of the applicant's allegations in its statement of grounds. (3) The consequences of treating the proprietor as opposing or not opposing the application. (4) Any prejudice caused to the applicant by the delay. (5) Any other relevant considerations, such as the existence of related proceedings between the same parties.”
“I consider that the burden is a high one on a proprietor who has missed a deadline to provide a full explanation as to why the deadline was missed, including exhibiting relevant correspondence, which goes further than the requirements that Mr Thorley set out in Siddiqui.”
“i) the same principles apply in trade mark appeals as in any other appeal underCPR Part 52 . However, given the nature of such appeals, additional factors may be relevant; ii) the Ladd v Marshall factors are basic to the exercise of the discretion, which are to be applied in the light of the overriding objective; iii) it is useful to have regard to the Hunt-Wesson factors; iv) relevant factors will vary, depending on the circumstances of each case. Neither the Ladd v Marshall factors nor the Hunt-Wesson factors are to be regarded as a straightjacket; v) the admission of fresh evidence on appeal is the exception and not the rule; vi) the Gucci decision does not establish that the Court or the Appointed Person should exercise a broad remedial discretion to admit fresh evidence on appeal so as to enable the appellant to re-open proceedings in the Registry; and vii) where the admission of fresh evidence on appeal would require that the case be remitted for a rehearing at first instance, the interests of the parties and of the public in fostering finality in litigation are particularly significant and may tip the balance against the admission of such evidence.”