Trade mark decision

BL Number
O/104/05
Decision date
18 April 2005
Hearing Officer
Mrs A Corbett
Mark
ARGENTUM
Classes
08
Applicant for Revocation
Middlesex Silver Co Ltd
Registered Proprietor
Argentum Ltd
Revocation
Interlocutory Hearing re a request by the registered proprietor to file evidence in defence of the registration.

Result

Request to file evidence: - Request refused.

Points Of Interest

  • 1. Highlights again the importance of following procedures set down in the Act and Rules, in inter partes conflict before the Registrar.

Summary

The mark in suit was registered on 24 January 1992. On 23 August 2004 an application was made to revoke the registration on the grounds of non-use during the five year period 1 July 1999 to 30 June 2004. A copy of the application was served on the proprietor on 16 September 2004 and a period of three months was allowed for the filing of a Form TM8, Counterstatement and evidence of use of the mark in suit. On 13 December 2004 Form TM8 and Counterstatement were filed with four exhibits (i) and (ii) copy invoices (iii) a catalogue and (iv) a care instruction.

The Registry examined the material provided and advised the registered proprietor that as the evidence of use claimed had not been filed in proper form the Registrar would treat the application as unopposed. Subsequently, the registered proprietor asked to be heard on the matter and an interlocutory hearing took place on 2 March 2005. After hearing the parties the Hearing Officer decided that as no evidence had been filed by the registered proprietor, and the period for filing such evidence was not extendible, the application for revocation should succeed. Subsequently, the Hearing Officer was asked to give reasons for her decision.

Section 100 of the Trade Marks Act places the burden of providing evidence of use to defend a registration, on the registered proprietor. Rule 31 sets down the procedure for revocation actions and Rule 31(3) clearly states what the registered proprietor must do to defend his registration. The filing of evidence is governed by Section 69 of the Act and Rule 55 and evidence of use must be by way of statutory declaration or affidavit.

In the present case the evidence of use claimed could not be accepted as it was not in proper format. Rule 31(3) could not be extended as per the restriction set down in Rule 68(3)(b) and there were no grounds for granting an extension under Rule 68(1). Thus the application for revocation must be deemed to be unopposed.

Full decision O/104/05 PDF document35Kb