Trade mark decision
- BL Number
- Decision date
- 28 October 2004
- Hearing officer
- Mr C Bowen
- 09, 36, 37, 41, 42
- Globix Corporation
- Chicago Mercantile Exchange
- Interlocutory Hearing to discuss the applicant’s failure to file Forms TM8. Applications deemed abandoned.
Forms TM8 not filed within time: - Applications in suit deemed abandoned.
Points Of Interest
- 1. Highlights the importance of getting documentation in order. The Act and Rules allow the Registrar little discretion.
Following the filing of opposition to the above applications, the opposition documents were sent to the applicant’s agents and a period of three months was allowed for the filing of Forms TM8 and Counterstatements. Subsequently, counterstatements were filed but the Forms TM8 were missing. The agents claimed this was either an oversight in their office, and they gave details of procedures followed, or alternatively, the Forms TM8 had been filed and mislaid by the Registry.
Subsequently a hearing was appointed to hear argument since the failure to file Forms TM8 leads to the applications being deemed abandoned. Both parties presented argument. The applicant claimed that the information required for a Form TM8 had been present in the accompanying correspondence; the opponent had been allowed to amend the notice of opposition on two separate occasions and in the interests of fairness and equity the applicant should be given the same opportunity. The opponent pointed to the requirement in the Act and Rules for both the filing of Form TM8 and Counterstatement and that requirement had not been complied with in these proceedings.
Both parties accepted that a very similar situation had arisen in the LEATHER MASTER case (BL O/090/03) which had been appealed to the Appointed Person. In his decision dated 25 January 2004 (BL O/084/04) the Appointed Person had concluded that the Act and Rules required the filing of Form TM8 and Counterstatement and that the Registrar had no discretion to extend the three month period allowed for this procedure to be completed. In this case the Hearing Officer concluded that the circumstances here were extremely close to those set down in the LEATHER MASTER case and there was no evidence that any loss of documents had occurred in the Registry. The appeal was therefore dismissed and the applications in suit deemed abandoned.
Full decision O/326/04 54Kb