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Trade mark decision

BL Number
O/177/04
Decision date
21 June 2004
Hearing officer
Mrs A Corbett
Mark
OMEGA
Classes
14, 41, 42
Registered Proprietor
Omega SA (Omega AG) (Omega Ltd)
Applicants for Revocation
Omega Engineering Inc
Interlocutory Hearing to determine various matters in Revocation proceedings

Result

Date of partial surrenders determined

New date for filing of TM8 set, as a correction of an irregularity.

Points Of Interest

  • 1. Partial surrender of registration; effective date.
  • 2. Rule 68(7) : failure to file TM8 rectified as a correction of an irregularity in or before the Office.

Summary

At the outset of revocation proceedings against these three registrations the registered proprietor, in place of filing TM8s, had filed forms TM23 partially surrendering the scope of the registrations. The applicant for revocation had indicated that these partial surrenders would close the matter for them, subject to their being effective as from the date of the commencement of proceedings.

The Registry, however, had indicated that the partial surrender could be effective only from the date on which the request had been received; there was no provision for the back-dating of such action. This, after various passages of time, result in a hearing at which it was necessary to consider the status of the Forms 23 requesting partial surrender, the effective date of such surrenders and the consequent effect on the future of the revocation actions.

After reviewing the sequence of events and the relevant provisions in the Act and the Rules, the Hearing Officer concluded that the Registry had been in error in not proceeding with the publication of the (valid) partial surrenders, the effective date being the publication of the surrenders.

As to the further conduct of the proceedings the Hearing Officer ruled that whilst the period for filing a counterstatement (a period which could not be extended) had expired, this had been the result of an error in procedure and could be rectified by the Registrar under Rule 68(7). The Hearing Officer therefore set a new date for the filing of a TM8 and evidence of use or evidence in support of reasons for non-use.

Both sides asked for an award of costs. The Hearing Officer declined to make such an award in favour of either party but she stated that in view of the Registry’s poor handling of the matter the parties were at liberty to make written representations to the Registrar concerning ex gratia payments.

Full decision O/177/04 PDF document43Kb