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Defending Against Non-Use Revocation Where a Timely Defence Was Not Filed

The consequences of not filing a full and timely defence to a non-use attack on a U.K. trade mark registration can be severe. Recent rulings have shown that those consequences are not necessarily mitigated by the filing of a partial or late defence. This article examines the documents required to defend against a non-use revocation action, and what happens when trade mark owners, for whatever reason, fail to comply in time.

 

The Legal Framework

The Trade Marks Act 1994 provides that:

S.46(1) The registration of a trade mark may be revoked on any of the following grounds-

(a) that 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; [or]

(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use

Where an application for revocation based on non-use is filed, the Registry sends a copy of the application to the registered proprietor or, if recorded, his address for service. The trade mark owner has three months from the date those documents are sent to respond. Under the Trade Marks Rules 2000 (as amended), :

Rule 31 (3) The proprietor shall, within three months of the date on which he was sent a copy of From TM26(N) and the statement by the Registrar, file a Form TM8, which shall include a counter-statement and be accompanied by-

(a) two copies of evidence of use of the mark; or

(b) reasons for non-use of the mark, otherwise the Registrar may treat him as not opposing the application.

This rule is the basis for determining the number and nature of the documents to be filed within the time limit and the discretion of the Registrar where no timely response is filed.

 

What Happens When No Response Is Filed?

When trade mark owners fail to meet the time limit imposed, the scope for excusable non-compliance or for any discretion of the Registrar in favour of the proprietor is small. Notwithstanding this, failure to comply in whole or in part is not that uncommon. A scattering of recent cases gives a flavour of the most common reasons for non-compliance, and may foreshadow the likely outcome when similar fact-patterns emerge in practice.

 

The trade mark owner never received notification of the action

Unless it can be shown that this was due to an error, default or omission on the part of the Registry, the lack of receipt of a notification by the proprietor will not excuse his failure to comply with the non-extendible deadline for defending his registration.

The Registry sends the notification to the proprietor’s recorded address, or, if there is one, to his recorded address for service. It is therefore vital to ensure that contact details are always current on the Register. That this is the proprietor’s responsibility was confirmed in a recent appeal to the Appointed Person (Mr Geoffrey Hobbs QC) in Ms A J Coggins v Skjelland Group AS (BL O-340-04) in which it was held that the Registrar is under no duty to verify the currency of the listed address for service before sending any communication and is entitled to accept the address recorded at face value. Service is deemed to have been effected when the documents are sent by pre-paid post to that recorded address. In this case the proprietor’s failure to keep her address details current could not excuse her non-compliance.

In another recent appeal, Applied Technologies Manufacturing Ltd. v Apple Projects Ltd. (BL O-348-04), Mr Richard Arnold QC sitting as the Appointed Person noted that the event that sets the three month response term in motion is the effective service of documents by the Registrar and not the receipt of those documents by the proprietor.

 

The trade mark owner filed an incomplete response, albeit with all necessary information

To meet the three-month deadline, all of the required documents listed in Rule 31(3) must be filed. Filing of the Form TM8 in its prescribed form is mandatory.

Although not a non-use revocation case, the appeal case Uniters SpA v KML Invest AB before Mr Geoffrey Hobbs QC sitting as the Appointed Person is relevant, as it concerns a failure of a trade mark applicant to file a Form TM8 in an opposition. The Registrar decided to treat the opposition as uncontested and the application was deemed withdrawn. On appeal, the applicant argued that it had in substance complied because most of the information required by the Form TM8 could be gleaned from the counterstatement and covering letter.

This argument failed. On appeal it was held that the Registrar has the power to decide whether variations of the prescribed forms constitute acceptable alternatives, but not to exempt from the obligation to use an acceptable form. The filing of the form was prescribed by the Rules in order to ensure that administrative clerks could speedily process forms at the Patent Office. Failure to enforce this requirement would undermine the ability of the Patent Office to deal with the large number of matters it dealt with expeditiously. The application was treated as withdrawn.

 

The trade mark owner files the form and counterstatement, but no evidence of use

If a Form TM8 and counterstatement are filed in time, can the Registrar extend the time limit for filing evidence of use or reasons for non-use? In Applied Technologies, Mr Richard Arnold QC noted that in an earlier case, OMITEC Trade Mark, Mr Simon Thorley QC as Appointed Person had held that such an extension would be possible. Mr Arnold expressed doubt as to the correctness of this view. In the event, however, he was not required to reach any conclusion on this point.

It is unwise not to file any evidence of use or reasons for non-use along with the Form TM8 and counterstatement. Proprietors should file as much evidence of use as they can at that stage; they will only have an opportunity to file further evidence where the evidence already filed demonstrates an arguable case against revocation.

 

Damage Limitation: Options and Strategies

When a trade mark owner has failed to defend in time, there are some very limited possibilities to avoid the Registrar treating the application to revoke as uncontested.

 

Registrar’s power to extend time under Rule 68(7)

Although the three-month time limit for filing a Form TM8 and supporting documentation is non-extendible, an exception may arise if the default is attributable wholly or partly to an error, default or omission of the Registry, and it appears to the Registrar that late compliance should be permitted.

The Registrar’s only obligation, however, is to have properly served notice of the action on the proprietor by post at his listed address. The scope offered by this exception is therefore very small.

 

Discretion of Registrar under Rule 31(3)

Rule 31(3) provides that in default of the registered proprietor, the registrar may treat him as not opposing the application for revocation. The word “may” allows the Registrar some discretion.

The exercise of that discretion, however, does not extend to allowing the Registrar to extend an otherwise non-extendible term for filing a defence, as confirmed by Mr Justice Patten recently in George Lowden v The Lowden Guitar Company Ltd. [2004] EWHC 2531 (Ch). The discretion is limited and will, in most cases, only allow the proprietor to remain a party to the proceedings, and to be entitled to a hearing on whether the Registrar’s discretion should be exercised and on whether the registration should ultimately be revoked. It is unlikely to permit late filing of evidence of use. The scope of the defence that could be mounted at a revocation hearing, therefore, is likely to be restricted to identifying defects or factual errors in the grounds of the application for revocation.

In Lowden, the applicant for revocation mistakenly pleaded a date for revocation which was legally impossible, because it pre-dated the earliest date on which revocation could have been ordered. The case was returned to the Registrar to determine the applicant’s request to amend its grounds of revocation. If the request was granted then the Registrar would have to allow the proprietor time to serve a counterstatement in relation to the amended grounds. This would be a fortunate outcome for the trade mark owner, but such circumstances are unlikely to be common.

 

Don’t Overlook the Right to be Heard

In the non-use revocation actions mentioned above, the trade mark owners’ default was followed by decisions to revoke. In each of the appeals, however, it was noted that the Registrar had issued the decisions without giving the party adversely affected by the decision (the proprietor) the right to be heard, a requirement under Rule 54(1).

Whether submissions will change the outcome where a trade mark owner has failed to file a timely defence against non-use attack will depend on the facts of the case. The judgments referred to above are likely to be highly influential where similar facts emerge, but the fact that cases on this issue continue to arise demonstrates that not all possible scenarios have yet been explored. Trade mark owners and their advisors should therefore consider their options carefully based on the individual facts of their own case, and should not overlook their right, even if not expressly offered, to be heard.