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Tribunal Practice Notice (TPN 1/2005)

Revocation (non-use) procedures, Section 46 of the Trade Marks Act 1994 (as amended)

This TPN is concerned only with proceedings before the Office to revoke a trade mark on the grounds of non use. A number of decisions, by the Courts and the Appointed Persons, have led the Trade Marks registry to make changes. This notice advises users and practitioners what these changes are, how they will operate as well as drawing attention to some points of interest which users and practitioners might wish to note.

1 Commencement of proceedings

1.1 Form TM26(N)

In Omega SA v Omega Engineering Inc. [2003] EWHC 1334 (Ch) Mr Justice Jacob, as he then was, stated that if the applicant for revocation wants the revocation to be effective from a date earlier than the date of application they must specifically allege that the grounds existed at an earlier date and state the actual date from which they want revocation to be effective (see Annex A).

Thus an applicant for revocation must provide a clear and unequivocal statement for the registered proprietor to disprove by supplying evidence of use. The Trade Marks Registry has now revised the form in line with this decision.

The form TM26(N) now requires the applicant to state, at box 5, whether the application for revocation is based on Section 46(1)(a), 46(1)(b), or both, of the Act. Where the application is based upon Section 46(1)(b), at box 6, the applicant is required to state within what 5 year period they claim the mark has not been used. They are also required to state from what date they want the revocation to take effect. Note, in the case of an application based on Section 46(1)(a) this date must be at least 5 years after the completion of the registration procedure (see 1.2 and 1.3 below).

Where the application is based on Section 46(1)(b) the date for which revocation is sought can be any date from the date 5 years after the completion of the registration procedure up to and including the date of application for revocation. Where a 5 year period is stated in box 6 of the form the date requested in box 7 should be the last date of the stated 5 year period or later (see 1.3 below).

The form now in use when completed in full provides all the relevant factual information required for the application for revocation to be processed, the statement of case merely amplifies and brings additional matters to the attention of the registered proprietor and the hearing officer.

Entering text such as "see attached statement of case" in boxes 6 and/or 7 will be regarded as a failure to complete the form correctly. Failure by the applicant to complete the boxes on the form correctly will result in the form being returned to the applicant for revocation by the Case Work Examiner, with guidance as to the corrections required. Until the form is properly completed it will not be admitted or served on the registered proprietor.

1.2 The earliest date for revocation

In George Lowden v The Lowden Guitar Company Ltd. [2004] EWHC 2531 (Ch) Mr Justice Patten commented on the earliest date from which a revocation on the grounds of non-use could be effective (see Annex B).

It is therefore clear that the earliest 5 year period that an application for revocation can be based upon is that under Section 46(1)(a) and revocation of a mark cannot take place at any date earlier than 5 years after completion of the registration process, or 5 years after the date of conferral of protection in the case of trade marks on the International Register which have been extended to the United Kingdom.

1.3 Effective date of revocation

The applicant for revocation is required to enter the date from which they want the revocation to take effect on the form TM26(N) at box 7. This may be one, two or all three of the following possible dates depending on the claim made by the applicant.

Under Sections 46(1)(a) and 46(6)(b) of the Act, the effective date will be the date 5 years after the completion of the registration process or 5 years after the date of conferral of protection.

Under Sections 46(1)(b) and 46(6)(a) of the Act the effective date must be the date of application for revocation (which must be at least 5 years after the completion of the registration process or 5 years after the date of conferral of protection).

Under Sections 46(1)(b) and 46(6)(b) of the Act the effective date will be another date based upon a five year period entered in box 6 of the form TM26(N).

If the application is made in respect of more than one date, care should be taken to ensure that all the relevant dates are clearly indicated on the form TM26(N).

In summary the Trade Marks Registry will therefore allow up to three separate periods where non-use is alleged on a single form TM26(N) and statement of grounds. These three separate periods will be under sections 46(1)(a) and 46(6)(b), the five year period following the completion of the registration process with the effective date being five years after the completion of the registration process; under sections 46(1)(b) and 46(6)(a), the five year period up to the date of application for revocation with the effective date being the date of application for revocation; and under sections 46(1)(b) and 46(6)(b), a five year period in between (or overlapping) the two previous stated periods and the effective date being the date at the end of the five year period claimed.

Any other alleged period of non-use must be the subject of a separate application.

1.4 Forms "sent" to the registered proprietor

Mr Geoffrey Hobbs, QC, sitting as the Appointed Person in Ms. Alison June Coggins v Skjelland Group AS (BL O-340-04), and Mr Richard Arnold, QC, sitting as the Appointed Person in Applied Technologies Manufacturing Ltd. v Apple Projects Ltd. (BL O-348-04), considered the requirement of the Registrar to "send" the application for revocation to the registered proprietor (see Annex C).

When the form TM26(N) has been admitted into proceedings it is then "sent" to the registered proprietor under Rule 31(2). This is done by means of recorded delivery via the Royal Mail. The registered proprietor has a period of three months from the date the form TM26(N) is sent within which to file their defence. Therefore the three month period will commence on the date the Trade Marks Registry sends the form to the registered proprietor.

In the event that the package sent via recorded delivery is undeliverable for any reason and is returned to the registry during the three month period for filing a defence it will be resent via normal mail. The date for filing the defence will not be reset.

The onus rests with the registered proprietor to ensure that the relevant details attached to their registration are correct, in particular their name and address details along with the details of their legal representation. If an old and incorrect address is recorded on the register this cannot be regarded as a defence in the event of the failure to file a form TM8 and evidence of use.

1.5 Amendment of pleadings

In George Lowden v The Lowden Guitar Company Ltd. [2004] EWHC 2531 (Ch) Mr Justice Patten commented on the amendment of the pleadings made by the applicant for revocation (see Annex D).

Therefore, if during the three month period allowed for the registered proprietor to file their defence, the applicant requests that the factual basis for the application for revocation, as stated on the form TM26(N) and/or the statement of case, be amended then the period for filing the defence will be reset. The amendment of clerical errors relating to administrative data such as names and/or addresses will not reset the period for filing a defence.

Effectively by amending their case prior to the filing of the defence, or completion of the period for the filing of defence, the case returns to Rule 31(2) with the form TM26(N) and statement of case being re-sent and the period for filing the defence reset.

2 Defence of the registration

2.1 Period for filing defence

Under Rule 31(3) the period set for the filing of the defence by the registered proprietor is three months. Within that period they must file a form TM8, which shall include a counter-statement, and either two copies of evidence of use or reasons for non-use. This period of three months is non-extendable as stated in Rule 68(3).

2.2 Evidence of use

At this stage a registered proprietor is only required in their evidence to show that they have an arguable case; more detailed evidence can be submitted later in the proceedings. Where the applicant has stated more than one 5 year period and sought more than one date of revocation the registered proprietor does not have to provide proof of use for all the periods stated. The registered proprietor need only address the most recent 5 year period claimed as this is likely to reflect the current state of the marketplace or at the least demonstrate that the trade mark was in use at the most recent relevant period.

The requirement in the rule to supply evidence of use 'up front' reflects the statutory burden (section 100 of the Act) on the proprietor of a registered mark, in any civil proceedings, to show what use has been made of it. A useful case on evidence of use is Groupement Carte Bleu v CB Richard Ellis (BL O-586-01). In this case the Hearing Officer found that evidence of use did not have to comprise the registered proprietor's entire defence in relation to use, as they had a further opportunity under the rules to file evidence of use. It is enough if the registered proprietor can show that they can mount a defence of the mark. Nevertheless, the registered proprietor is obliged to show the mark in use, e.g. in brochures, catalogues, pamphlets, advertisements, together with some indication of sales of goods or the provision of services during the relevant period. On the facts of that case, the Hearing Officer decided that pages taken from an internet website outside the relevant period did not comprise evidence of use.

2.3 Failure to file a defence

Under Rule 31(3) there is a discretion vested in the registrar in the event that the registered proprietor fails to file a defence, the last part of the rule states

"otherwise the registrar may treat him as not opposing the application."

On appeal in George Lowden v The Lowden Guitar Company Ltd [2004] EWHC 2531 (Ch), Mr Justice Patten indicated that the breadth of discretion is in fact very limited. Mr Justice Patten determined that as the period for filing a defence was non-extendible, and Rules 31(6) and 31A only come into play if a defence is properly filed within the non-extendible time limit. Thus the discretion may only be exercised in relation to factual errors on the form TM26(N) and/or statement of case. In those particular proceedings an invalid date of revocation had been requested on the statement of case and this could be grounds for exercising discretion (see Annex E).

The issue of this discretion and how it should be exercised, under Rule 54, was also dealt with by Geoffrey Hobbs, QC, sitting as the Appointed Person in Ms. Alison June Coggins v Skjelland Group AS (BL O-340-04) (see Annex F).

Following this decision, in the event that no defence is filed in cases of revocation on the grounds of non-use, the registrar will write to the parties giving them a period of 14 days within which to either request a hearing or to provide a submission stating why discretion should be exercised in these proceedings.

However, missing the date for filing the defence through a procedural or administrative error or through an incorrect name and/or address being recorded on the register will not constitute sufficient grounds for exercising discretion in favour of the registered proprietor as the evidential rounds covered by Rule 31A could not come into play in the proceedings. Mr Justice Patten determined that there was no remedy for the failure to file a proper defence of the registration during the non-extendible time period, discretion may only be exercised in the event of factual inaccuracies or errors on the form TM26(N) or statement of grounds and this only allows the registered proprietor to argue that the application for revocation was invalid in some way, factual evidence of use cannot, at that stage, be admitted into the proceedings.

Please direct any enquiries about this notice to:

Raoul Colombo
Head of Law Section
Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

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

Annex A

In Omega SA v Omega Engineering Inc. [2003] EWHC 1334 (Ch) Mr Justice Jacob, as he then was, stated at paragraphs 11 and 12:

11. I have come to the conclusion that [Counsel for the claimant] is right. Just reading this form, I do not think that the proprietor would appreciate that revocation going back to the date of 1960 or any earlier date was actually sought. The mere reference to section 46(1)(a), to my mind, does not fairly put in play use for the earlier period. After all, the pleading simply said "for at least the last five years". That was the factual allegation that was made in the pleading. That factual allegation is what the trade mark owners set about rebutting. I do not regard this as a purely technical point; it is more serious than that. If a party wants revocation to take effect from an earlier date than the date of application for revocation, in my judgement, it should set out what date it wants and explicitly allege that the grounds for revocation existed at an appropriate earlier date.

12. I think it is a little unfortunate that the current registry form for revocation on the grounds of non-use, Form TM26N, does not itself identify the date for which revocation is sought. That would doubtless help but, in the absence of that, it does not seem to me that one can fairly read the statement of grounds as seeking an earlier date simply by reference to the combined provisions of section 46(1)(a) and section 46(1)(b).

Annex B

In George Lowden v The Lowden Guitar Company Ltd. [2004] EWHC 2531 (Ch) Mr Justice Patten stated at paragraphs 10 and 11:

10. It is common ground on this appeal (for the reasons outlined above) that the Registrar had no power to order revocation of the mark with effect from 20 October 1999........... He relies on paragraph 2 of the Statement of Grounds, which he says supports revocation from a legitimate date (i.e. 20 October 2000) by its reference to non-use within a period of five years "from the completion of the registration procedure". The Court can therefore, he says, correct the date without setting the order aside or directing a re-hearing.

11. There is no evidence from the Company’s trade mark attorneys as to how the wrong date came to be inserted in paragraph 3 of the Statement of Grounds, and Mr Hill's argument is based solely on the fact that paragraph 2 and 3 are, on one reading, in conflict with each other. The difficulty, however about this argument is that it does not follow from the apparent inconsistency between the two paragraphs that the use of the 1999 date was an accidental or clerical error, as opposed to a misunderstanding as to which of the two possible dates was the correct one for the purposes of s.46. More to the point, however, the letter of 23 April 2004 from the Company's trade mark agents to the Registry, which sought to persuade the Registrar to order revocation from 20 October 2000, did not refer to the 1999 date as being the product of such an error. The point it made was that the 1999 date was earlier than the expiration of five years from the date of registration. Notwithstanding, but in the knowledge of this, the Hearing Officer went ahead and directed revocation from the 1999 date. Not only is this a legal impossibility, but the reasons why it was such were made known to the Hearing Officer prior to the decision being made. In no way was the inclusion of the 1999 date in his decision and order an accidental one of the kind which in my judgment would be required for it to be remediable by the application of the slip rule under CPR 40.12. This was an error of law which can only be corrected substantively on an appeal.

Annex C

Mr Geoffrey Hobbs, QC, sitting as the Appointed Person in Ms. Alison June Coggins v Skjelland Group AS (BL O-340-04), stated at page 3 line 22 to page 5 line 8.

In accordance with the provisions of Rule 31(1), the Registrar sent copies of the application for revocation and the revised statement to the registered proprietor of the trade mark in suit. The copies were sent to her by post at her address for service. Initially, they were sent to her by recorded delivery post on 16 January 2004. However, the letter was returned by the Post Office as "undeliverable". A further letter containing copies of the relevant documents was sent to the same address by ordinary post on 23rd January 2004.

Rule 10(4) of the Trade Marks Rules 2000 provides as follows:

"Anything sent to any applicant, opponent, intervener or registered proprietor at his address for service shall be deemed to be properly sent; and the registrar may, where no address for service is filed, treat as the address for service of the person concerned his trade or business address in the United Kingdom, if any."

Section 7 of the Interpretation Act 1978 further provides that:

"Where an Act authorises or requires any document to be served by post (whether the expression 'serve' or the expression 'give' or 'send' or any other expression is used) then, unless the contrary intention appears, the service is deemed to be effected by properly addressing, pre-paying and posting a letter containing the document and, unless the contrary is proved, to have been effected at the time at which the letter would be delivered in the ordinary course of the post."

By virtue of the combined effect of these provisions, service of the documents which the Registrar was required to send to the registered proprietor under Rule 31(1) is deemed to have been effected when they were sent, i.e. despatched, to her address for service by pre-paid post under cover of the unreturned letter of 23 January 2004.

and at page 9 lines 2 to 24 inclusive.

The appeal on behalf of the registered proprietor was put upon the footing that she had not been duly served with copies of the relevant Form TM26(N) and statement of case under Rule 31(1). It was submitted that the Registrar was under a duty in the circumstances of the present case to verify the currency of the address for service at 43 Moreton Street.

In my view these submissions are misconceived. The policy considerations underlying provisions such as those found in Rule 10(4) and Section 7 of the Interpretation Act 1978 negate the existence of any such duty and entitle the Registrar to accept the address for service at face value, see the judgments of the Court of Appeal in the case of C A Webber (Transport) Ltd v. Railtrack Plc [2003] EWCA Civ 1167 15 July 2003.

The reasons for the failure on the part of the registered proprietor to comply with the requirements of Rule 31(2) within the period of three months prescribed for that purpose do not singly or in combination permit me to hold that there was a failure on the part of the Registrar to comply with the requirements of Rule 31(1). And there is no request for relief against the consequences of Rule 31(3) under Rule 68(7).

This was supported by Mr Richard Arnold, QC, sitting as the Appointed Person in Applied Technologies Manufacturing Ltd. v Apple Projects Ltd. (BL O-348-04), at paragraphs 30 to 32.

30. Secondly, I agree with Mr Hobbs' conclusion in OIOI Trade Mark that the registered proprietor’s time for filing a counter-statement etc. runs from the sending of the application, although (a) that conclusion is not supported by section 7 for the reasons I have just given and (b) I have arrived at that conclusion by a different route.

31. Thirdly, I doubt whether Mr Hobbs was correct to hold, as he implicitly did, that time starts to run again if the Registrar discovers that the application has not been delivered to the registered proprietor and re-sends it. Since the point does not arise for decision in the present case, however, it is unnecessary for me to reach any conclusion on the matter.

32. Fourthly, I consider that there can be no burden on the Registrar to verify that the documents have been received, as the registered proprietor argued before me; just as there can be no duty on the Registrar to verify the currency of the address for service, as Mr Hobbs held in OIOI Trade Mark at [page] 9.

Annex D

In George Lowden v The Lowden Guitar Company Ltd. [2004] EWHC 2531 (Ch) Mr Justice Patten stated at paragraph 28:

28. For the purposes of this appeal I am prepared to accept that the Registrar has power (as part of his control of proceedings in the Registry) to permit amendments to applications, provided that the power is not exercised in a way which contradicts or is inconsistent with the TMR or the provisions of the 1994 Act. The Practice Notice which I have quoted from does not, however, deal with the position in relation to amendments which arise when the proprietor has failed to file the counter-statement within the three months allowed by rule 31(2) and the Registrar either has exercised or is being invited to exercise his powers under rule 31(3). It seems to me that in a case where the registered proprietor has in effect been debarred from defending the application for revocation on its merits by virtue of the late filing of the counter-statement, it is not possible for the Registrar to grant permission to amend without starting time running again for the service of the counter-statement under rule 31(2). This is because the amendment of the Statement of Grounds triggers an obligation on the part of the Registrar under rule 31(1) to send a copy of the amended statement to the proprietor. This will then bring rule 31(2) into operation in relation to the amended statement and allow the proprietor to serve a counter-statement in the three month period, even when he has failed to do so in relation to the Statement of Grounds originally served. The Registrar's current practice is to allow less than three months for the service of an amended counter-statement in such circumstances, but I do not believe that this is compatible with the provisions of rule 31(2), although a shorter period could be allowed if the respondent consented to it. Whatever period is allowed, it is not therefore open to me to grant permission to the Company to amend its Statement of Grounds to change 1999 to 2000 without allowing Mr Lowden the opportunity of serving his counter-statement in time. If (as I assume) that will be done, then no order for revocation can be made without a hearing on the merits.

Annex E

On appeal in George Lowden v The Lowden Guitar Company Ltd [2004] EWHC 2531 (Ch), paragraphs 16 to 26 inclusive, Mr Justice Patten has indicated that the breadth of discretion is in fact very small, see in particular paragraph 25 below.

25. I do not therefore accept that it was open to the Registrar to create some alternative procedure for use in this case which entitled him to consider whether he should allow the application to continue as an opposed application by admitting factual evidence. This is one of the directions which Mr Malynicz seeks from me, in the event that his appeal is successful. The discretion created under rule 31(3) has to be exercised on the basis that the proprietor is not entitled to defend the factual basis of the application. The Registrar must therefore consider whether the application is one which will not necessarily be granted, even if the alleged non-use is not challenged. For this purpose I think that the Registrar is entitled to look at the material filed out of time by the proprietor and to rely on it so far as it identifies reasons which could be pursued even in the light of non-use. In practice this is likely to limit any continued opposition in most cases to defects in the application which are apparent from the Statement of Grounds. The Registrar’s consideration of these issues will entitle the registered proprietor to a hearing under rule 54, both in relation to the rule 31(3) decision and also in relation to the subsequent decision to be made on the application to revoke. If the proprietor is able at the first hearing to identify matters of the kind I have described, then the proper course is likely to be that the application will continue to be treated as opposed and he will be represented at any subsequent hearing at which a decision is taken whether or not to revoke registration.

Annex F

Mr Geoffrey Hobbs, QC, sitting as the Appointed Person in Ms. Alison June Coggins v Skjelland Group AS (BL O-340-04), stated at page 9 line 25 to page 10 line 25 inclusive.

However, that does not mean that I am satisfied that the decision issued on 9 June 2004 is free of procedural irregularity. It appears to me that a decision on the part of the Registrar under Rule 31(3) as to how matters should thereafter proceed in a case covered by that rule is a decision to which the provisions of Rule 54 apply.

Rule 54 provides as follows:

"(1) Without prejudice to any provisions of the Act or these Rules requiring the registrar to hear any party to proceedings under the Act or these Rules, or to give such party an opportunity to be heard, the registrar shall, before taking any decision on any matter under the Act or these Rules which is or may be adverse to any party to any proceedings before her, give that party an opportunity to be heard.

(2) The registrar shall give that party at least fourteen days' notice of the time when he may be heard unless that party consents to shorter notice."

The requirements of this rule were clearly not satisfied in the present case and I think it is readily apparent that the failure to apply the rule had adverse consequences for the registered proprietor sufficient to warrant the conclusion that the decision issued on 9 June 2004 involved a serious procedural irregularity.