Opposition: abandonment of proceedings

In opposition proceedings, both under the Trade Marks Act 1938 and the Trade Marks Act 1994, where an opponent does not file evidence in support of his opposition the Registrar has a discretionary power to allow the proceedings to continue, rather than deem the opposition abandoned.

In both cases, the Registrar will generally allow the proceedings to continue if the opponent:

• a. has based at least part of his opposition on an existing registration (Section 12(1) of the 1938 Act or Section 5 of the 1994 Act) and
• b. states that he intends to rely on submission at a hearing.

Recent experience has shown that the Registrar’s practice in such cases, does not cover situations in which the opponent later changes his mind as to the subsequent conduct of proceedings. In future, in order to reduce the risk of unnecessary expense and waste of time, the Registrar will ask for a full statement of an opponent’s intentions in the matter of the conduct of his opposition, before taking a decision on continuation of the proceedings and issuing a direction, under Rule 13(8) of the Trade Marks (Amendment) Rules 1998. He will also consider making his decision provisional, conditional upon the opponent’s compliance with the procedure agreed. Subsequently, if a hearing is not sought by the opponents, or if the agreed procedure is not complied with, the opposition may be deemed abandoned as to the original date for the filing of evidence. The applicants, however, will be free to seek an appropriate award of costs, in the usual way.