Tribunal Practice Notice (TPN 2/2007)

Undefended applications for a declaration of invalidity (trade mark registrations)

1. The Registrar has reviewed his practice in relation to applications for a declaration of trade mark invalidity; in particular, applications which are undefended by the proprietor of the registered trade mark under attack. “Undefended” is defined in this context as meaning that no Form TM8 or counterstatement has been filed as per rules 33(5) and (6) of the Trade Marks Rules 2000 (as amended).

2. Hitherto, it has been the practice in such cases that an undefended action will not automatically result in success for the applicant, who has been required to file evidence in support of the application in order to satisfy a prima facie burden of proof, before the Registrar determines whether the application should succeed or fail (or partially so).

3. However, the Registrar will no longer require such a step in undefended invalidity proceedings provided that the pleaded grounds, if true, would provide a legal basis for invalidating the registration. The failure to file a defence will be taken to mean that the proprietor does not dispute the grounds for invalidation. Accordingly, where the pleaded grounds, if true, would provide a basis in law for invalidation and no defence is filed, the Registrar will issue a letter to the proprietor of record (copied to the applicant) advising that:

• (i) the applicant’s grounds for invalidation, if true, identify a basis in law for invalidating the registration;
• (ii) no defence to the application has been filed and the applicant’s grounds do not therefore appear to be disputed;
• (iii) unless the Registrar receives, within fourteen days of the letter, either a request to be heard or written submissions on the matter under rule 54(1), the registrar will treat the application as unopposed, as per rule 33(6), and will declare the registration invalid.

4. If nothing further is heard, or if the proprietor is unsuccessful in persuading the registrar to treat the application as being opposed, the application for a declaration of invalidity will succeed and in accordance with section 47(6), the registration shall be deemed never to have been made, to the extent that it has been declared invalid.

5. This practice applies to all current and future invalidation proceedings before the Registrar.

Please direct any enquiries about this notice to:

Raoul Colombo
Head of Law Section
Trade Marks Registry

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Phone +44(0)1633 811407
Fax +44(0)1633 811175