An exercise in discretion

23rd Apr 2019

The IPO saw the sense of allowing late paperwork, says Laura Robyn. O/070/19, Billions London (Opposition), UK IPO, 4th February 2019.

An exercise n discretion

O/070/19, Billions London (Opposition), UK IPO, 4th February 2019

Key points

  • This case is a useful reminder of the relevant considerations that are taken into account when a non-extendable deadline is missed
  • Trade mark applicants need to be alive to critical counterstatement deadlines and take all reasonable steps to ensure they are met

In May 2018, Billions London Ltd (the Applicant) filed a UK trade mark application for a BILLIONS LONDON device mark in class 25. The application was opposed by Billionaire Trademarks BV (the Opponent) under s5(2)(b) of the Trade Marks Act 1994, based on its earlier UK and EU trade mark registrations.

No defence was received by the 19th November 2018 deadline set by the UK IPO. The Tribunal enquired and was told by the Applicant that physical copies of the TM8 forms (in this and a parallel opposition in respect of a second application) were filed by post on 7th November 2018. The UK IPO investigated and confirmed that it only received the TM8 filed in respect of a parallel opposition, not the present case. The Applicant then emailed in another TM8 on 22nd November 2018, following which the Tribunal issued a preliminary view that the late TM8 could not be admitted to the proceedings. The Applicant requested a preliminary hearing. The Opponent did not file any submissions or attend.

Hearing

At the hearing, the Applicant made representations that the TM8 form had been sent to the IPO “to the best of the Applicant’s knowledge”. No light could be shed, however, on why the IPO only received one of the two TM8 forms.

The Hearing Officer (HO) ran through the relevant procedural provisions governing the Registrar’s discretion to admit the late filing of TM8s:

Rule 18(2): Where the applicant fails to file a form TM8 within the relevant period, the application shall, unless the Registrar otherwise directs, be treated as abandoned.
Jointly applying Rules 77(1) and 77(5), it follows that the deadline is only extendable if (i) it is attributable to a default, omission or error by the Registrar/Office/International Bureau, or (ii) it appears to the Registrar that it should be rectified.

Dismissing the avenue of an error on the part of the Registrar/Office/International Bureau, the HO went on to consider the relevant case law delineating the scope and application of the Registrar’s discretion. Citing two Appointed Person decisions in particular, the HO concluded that the discretion conferred by Rule 18(2) is a strict and narrow one that can only be exercised in “extenuating circumstances” (Kickz) and that there must be “compelling reasons” (Mercury) for doing so. The HO considered the relevant factors for consideration laid down in Music Choice:

  • the reason for and extent to which the deadline was missed;
  • the nature of the opponent’s allegations in its statement of grounds;
  • the consequences of treating the applicant as opposing or not opposing the opposition;
  • any prejudice caused to the opponent by the delay; and
  • any other relevant consideration, eg related proceedings between the parties.

Decision

In its decision, the HO noted in particular that: there were concurrent opposition proceedings between the two parties; no submissions were made in relation to any prejudice caused by the delay; and, if the TM8 were not admitted, further cost and delay would be caused to both parties, given that the Applicant would need to refile and the Opponent would, in all likelihood, oppose the new application. On this basis, the late-filed form TM8 and counterstatement were admitted into the proceedings.

Laura Robyn is a Trainee Trade Mark Attorney at Haseltine Lake LLP

Author

  • Laura Robyn

    Trade Mark Assistant, Haseltine Lake Kempner LLP (Bristol)