Trade mark decision

BL Number

O/160/00

Decision date

4 May 2000

Hearing Officer

Mr M Knight

Mark

TRIM

Classes

09

Registered Proprietor

John A Seiden

Applicant for Revocation

Tower Software Engineering Pty

Revocation

Sections 46 & 68(3)

Result

Section 68(3) - Application for revocation to proceed, with security for costs.

Points Of Interest

• Security for costs - a rare occurrence in trade mark disputes, such that a lack of awareness of due procedure, even among professional representatives, must be tolerated. Neither the Act nor the Rules sets out a prescribed timescale for provision of such security.

Summary

The Registry having determined that the applicant for revocation (an Australian company, albeit with a UK subsidiary) should provide security for costs, a preliminary issue arose between the parties as to whether delay in providing such security meant that the application should be deemed abandoned. In his statement of reasons for refusing to deem the application abandoned, the Hearing Officer explained that whilst the applicant could be criticised (through its agents) for not pursuing the security issue with greater diligence, there was no deliberate attempt to thwart or disadvantage the proprietor, and the proprietor had not been disadvantaged or inconvenienced to an extent justifying the refusal of the application on the technical issue of security for costs.

In reaching his decision, the Hearing Officer took into account an oversight in the Registry which eventually resulted in a departure from the Patent Office’s normal practice of declining to hold monies provided as security for costs.

Full decision O/160/00 486Kb