Extensions of time in inter partes proceedings

Extensions of time in inter partes proceedings are governed by Rule 68 of the Trade Marks Rules 2000. In essence, subject to a written request to the Trade Marks Registry (copied to the other side), the Registrar has the discretion to grant an extension of time in respect of any period prescribed by the Rules other than those periods, set out in Rule 68(3) which are non extendable.

Concerns have been expressed about the Trade Mark Registry's attitude to requests for extensions of time by parties involved in proceedings before the Trade Marks Registry who are seeking to reach a negotiated settlement. The purpose of this note is therefore to provide some guidance on the way in which the parties or their representatives might approach the matter of extensions of time, particularly when the parties wish to negotiate a settlement to the dispute.

The current case law under which this exercise of the Registrar's discretion is made is that set out in two recent cases:

• LIQUID FORCE [1999] RPC 429
• In the matter of Dr Ghayuasuddin Siddiqui v Dr M H A Kahn as a nominee of the Muslim Parliament of Great Britain SRIS No.0/481/00

In the first case, Geoffrey Hobbs QC, sitting as the Appointed Person said:

"In the interests of legal certainty it is plainly desirable that valid applications for registration should succeed and valid objections to registration should be upheld without undue delay. The time limits applicable to opposition proceedings under the 1994 Act and the 1994 Rules were formulated with that consideration in mind. The Registrar endeavours to ensure that prescribed time limits are observed, subject to his power to grant fair and reasonable extensions of time in appropriate cases."

In the second case Mr Simon Thorley QC, acting as the Appointed Person said:

"1. It must always be borne in mind that any application for an extension of time is seeking an indulgence from the Tribunal. The Act and the Rules lay down a comprehensive code for the conduct of prosecution of applications and for the conduct of opposition. The code presumes a normal case and provides for it.

2. There is a public interest which clearly underlies the rules that oppositions and applications should not be allowed unreasonably to drag on.

3. In all cases the Registry must have regard to the overriding objective which is to ensure fairness to both parties. Thus, it can grant an extension when the facts of the case merit it."

Against that background and set out below, are details of the number of extensions of time sought, granted and refused in inter partes actions in the first six months of 2001:

As can be seen, over 80%, on average, of all requests for extensions of time are granted. On the basis of those figures, it could be said that the Registrar, in exercising her discretion, is clearly having regard to the overriding objective of being fair to both parties to disputes before the Trade Marks Registry. She is also allowing the parties the time to negotiate a settlement and avoid the need for a substantive hearing.

The rules relating to opposition already contain provision for the parties to negotiate before becoming embroiled in proceedings. The Trade Mark Rules 2000 (at Rule 13(4)) provide for a cooling off period of up to six months before the applicant for registration is required to file a Form TM8 and a defence. The number of opposition cases where the cooling off period has been entered into and which the Trade Mark Registry assumes is being used to seek a negotiated settlement amounts to around 15% of the number of oppositions filed. The use made by parties to proceedings and their representatives of this facility is therefore surprisingly low. Nevertheless, if a negotiated settlement is considered to be a practical possibility then parties are encouraged to use the facility. It provides time for matters to be resolved without prejudice to opposition proceedings continuing where no settlement can be reached.

Once the Form TM8 is filed and proceedings are joined then the parties are required to file their evidence sequentially and three months periods are allowed for that in most proceedings before the Registrar. But any of those periods can be extended. If a party considers it necessary to have more time in order, for example, to conduct a survey and complete their evidence then an extension of appropriate length should be sought. Parties and their representatives are reminded that there is no "three months rule". It may be that there is some misconception that the Trade Marks Registry will only accept extensions of time requests of up to three months. That is not the case. There is nothing in the Rules or practice which dictates that extensions of time of 3 months only can be requested. A request should be made for the appropriate length of time required to undertake the work that needs to be done.

In requesting any extension, parties should bear in mind Mr Simon Thorley's further comments in the above mentioned case:

"Accordingly, it must be incumbent on the application for the extension to show that the facts do merit it. In a normal case this will require the applicant to show clearly what he has done, what he wants to do and why it is that he has not been able to do it. This does not mean that in an appropriate case where he fails to show that he has acted diligently but that special circumstances exist an extension cannot be granted. However, in the normal case it is by showing what he has done and what he wants to do and why he has not done it that the Registrar can be satisfied that granting an indulgence is in accordance with the overriding objective and that the delay is not being used so as to allow the system to be abused.

Jacob J made it clear in the SAW case that any perception that the Registrar would grant extensions liberally was wrong and I take this opportunity to repeat that. In principle matters should be disposed of within the time limit set out in the rules and it is an exceptional case rather than the normal case where extensions will be granted."

This decision makes clear the need to submit full and detailed reasons for the request. These reasons should be provided as part of that request. If the request is refused for lack of adequate detail, any subsequent hearing cannot be used to introduce further or better reasons either for the extension of time request or for objecting to its grant. (See Style Holdings PLC v Wilson Sporting Goods Co (unreported) 18 September 2001)

Where requests for extensions of time are made at a later stage in the proceedings to allow the parties to negotiate a settlement, the Trade Marks Registry will usually grant such requests. But the Trade Marks Registry will require parties to provide sufficient details to show there has been real progress towards such a negotiated settlement before any further requests will be granted. This is in line with the view expressed by Simon Thorley in relation to the Registrar's role in indicating that there is a public interest which clearly underlies the Rules and that oppositions and applications should not be allowed unreasonably to drag on.

It may however, be more appropriate, and as envisaged by Mr Geoffrey Hobbs in LIQUID FORCE, for the parties jointly to seek a stay or standstill in proceedings. Again, any stay in proceedings (which can be sought and granted under the Registrar's inherent jurisdiction), can be for any reasonable period and can be sought with the sole aim of negotiating a settlement between the parties. Other uses of the stay would be to allow proceedings before a higher tribunal to be determined because they might affect the outcome of proceedings between the parties before the Registry.

The Registry will require full reasons to support such a request and in granting a stay may attach conditions to protect the public interest. For example, a stay for 12 months may be accompanied by a condition that if no negotiated settlement is reached by the expiry of that period, then the party whose turn it is to file evidence will be required to do so within one month of expiry of the period. Alternatively, a party may give notice that negotiations have broken down before expiry of the stay period requested and, if that happens, the Registry may allow 3 months from date of notice for >X= or >Y = to file their evidence. Parties and other representatives should also take note that the Trade Marks Registry would expect the request for a stay to be for a period which is practicable in terms of what action a party or parties are undertaking or need to undertake within the extended period.

Where the evidential stages of the proceedings have been completed and the case is awaiting a substantive hearing (or a decision from the papers), the Registrar will be reluctant to postpone the hearing. She will, however, consider postponing the issue of the decision to afford the parties the time to complete negotiations.

In summary, parties are encouraged to make full use of the cooling off period where appropriate. Where proceedings are joined, parties wishing to request an extension of time should make the request for a reasonable period and should include in their request full reasons to support that request. Any hearing on a disputed extension request can only consider the relative merits of that request based on the reasons already provided. If parties wish to negotiate a settlement during the currency of proceedings before the Trade Marks Registry then they should jointly seek the Registrar's discretion to stay either the proceedings or the issue of a substantive decision, again for a reasonable period. On expiration of a reasonable extension or stay during the proceedings, the expectation will be that the parties will either have withdrawn the application/opposition or reached some other mutually acceptable agreement, or that they will be in a position to proceed diligently with the remaining stages of the proceedings.