Trade mark decision

BL Number
O/026/00
Decision date
2 February 2000
Appointed Person
Mr Geoffrey Hobbs QC
Mark
MEDIABASE
Classes
09, 35
Applicant for Revocation
Associated Newspapers Ltd
Registered Proprietor
Donovan Data Systems Ltd
Revocation
Request by the registered proprietor to allow into proceedings late filed Forms TM8 and Counterstatements

Result

Proceedings remitted to the Registrar for further consideration: (1) If no extension of time request made the appeal would stand dismissed. (2) If request made the order for revocation would be suspended until request for extension was dealt with. (3) If request refused the appeal against the order for revocation would stand dismissed with costs awarded to the applicant. (4) If request allowed the appeal against the order for revocation would be allowed with costs awarded to the registered proprietor.

Points Of Interest

  • (i) This decision would probably have been different under the Trade Mark Rules 2000 as the time for filing TM8 and Counterstatement (Rule 31(2)) is listed in Rule 68(3) as a non-extensible period.
  • (ii) Appeal from Hearing Officer’s decision dated 10 September 1999 (SRIS O/315/99).
  • (iii) No further action took place on this case as the revocation action was withdrawn on 2 December 2000.

Summary

In his decision dated 10 September 1999 (SRIS O/315/99) the Hearing Officer held that the three month period allowed for the filing of Forms TM8 and Counterstatements in Revocation proceedings (Rule 31(3) of the 1994 Rules) could not be extended. The Appointed Person, however took a different view. He compared the requirements of Rule 13 and Rule 31, which are linked and concluded that as Rule 31(3) was not excluded from the possibility of extension by Rule 62(3), that extension was possible. Therefore the case was remitted to the Registrar to consider the request for an extension of time if one was formally made by the registered proprietor.

Full decision O/026/00 PDF document50Kb