Trade mark decision

BL Number
Decision date
2 April 2003
Hearing Officer
Mr C Bowen
02, 03, 37
K.M.L. Invest AB
Uniters S.p.A
Failure to file Form TM8 in Opposition proceedings. Application deemed abandoned. Request by applicants to allow proceedings to continue.


Failure to file Form TM8 - Application deemed abandoned.

- Decision confirmed following a hearing.

Points Of Interest

  • 1. The provisions of Rule 13(6) of the Trade Marks Rules 2000 are mandatory.
  • 2. The applicants appealed to the Appointed Person. In his decision dated 20 January 2004 (BL O/084/04) the Appointed Person upheld the Hearing Officer’s decision.


Following advertisement of the mark in suit the opponents filed opposition. As set down in Rule 13(3) of the Trade Marks Rules 2000 the applicants were allowed a three month period ending on 17 September 2002 to file a counterstatement and Form TM8. On that date the applicants agents faxed a counterstatement to the Registrar and copied it to the opponents. Unfortunately, however, they had through error failed to file a Form TM8. The Registrar pointed out the defect, referred to Rule 13(6) and deemed the application abandoned.

The applicants responded, pointing out that all the information required for the TM8 was in the counterstatement and said it was clear from the filing of this document that the applicants wished to dispute the opposition. The opponents objected to the continuing of the proceedings and said that the provision of Rule 13(6) should be applied. They also pointed out that the counterstatement did not include a declaration of truth and accuracy which was required in relation to the Form TM8.

The parties then attended an interlocutory hearing before the Registrar. The applicants again argued that the Registrar should allow the proceedings to continue on the basis that there was no requirement for the prescribed form to be used and in any case where a procedural irregularity occurred the Registrar had the power under Rule 66 to rectify matters. The opponents disputed that there could be any relaxation of the requirements of Rule 13(6).

The Hearing Officer rejected the applicants arguments. He noted that no Form TM8, or replica or equivalent had been filed by the applicants by the due date. There was no escape from that requirement and the provisions of Rule 13(6) must be applied. In the circumstances of this case Rule 66 was not applicable, in the Hearing Officer’s view.

Full decision O/090/03 PDF document50Kb