Trade mark decision

BL Number

O/186/07

Decision date

4 July 2007

Hearing Officer

Mrs A Corbett

Mark

STORM

Classes

09

Applicants for Revocation

Jakks Pacific Inc

Registered Proprietor

Sun 99 Ltd

Revocation

Interlocutory Hearing re the filing of part of Form 8, Counterstatement and exhibits by way of email

Result

Incomplete documents filed in defence of registration by email: Appeal allowed. Registered Proprietor allowed to defend its registration

Points Of Interest

• The filing of documents by email is allowed

Summary

An application for revocation of the mark in suit was filed and the proprietor was allowed until 16 January 2007 to file a defence. On 16 January the registered proprietor filed the first page of Form TM8, a counterstatement and exhibits by way of email. The registry indicated that the papers and method of filing were not acceptable and the proprietor’s attorney filed a properly completed TM8 on 25 January 2007. Following further correspondence the registered proprietor requested a hearing.

After hearing the two parties the Hearing Officer indicated by letter that the filing of documents by email was not precluded by the Trade Marks Act and Rules. She also went on to exercise the Registrar’s discretion under Section 31(3) to allow the registered proprietor a short period to put its evidence into acceptable format and to defend its registration. The applicant for revocation asked for a statement of the grounds for the Hearing Officer’s decision.

The Hearing Officer dealt with the acceptability of the filing of document by email, by comparison with the filing of documents by facsimile, and decided that this method was not precluded. She took account of the fact that this method has been allowed by the Courts since the introduction of The Civil Procedure (Amendment) rules 2002 (Rule 4).

As regards the exercise of discretion the Hearing Officer took account of recent High Court judgements and Registry practice which has evolved from such decisions. She went on to list matters which must be considered as follows:

1. The circumstances relating to the missing of the deadline including reasons why it was missed and the extent to which it was missed.

2. The nature of the applicant’s allegations in its statement of grounds.

3. The consequences of treating the proprietor as opposing or not opposing the application.

4. Any prejudice to the applicant by the delay.

5. Any other relevant considerations, such as the existence of related proceedings between the same parties.

In the present case the Hearing Officer noted that the basis for the defence of the mark in suit had been made known within the relevant period and the missing page from the TM8 arose as a result of an error in the attorney’s office. Additionally there are other on-going proceedings which would be prejudiced by not allowing the proprietor to defend its mark. The Hearing Officer concluded that this was an appropriate case for the exercise of the Registrar’s discretion in favour of the registered proprietor.

Full decision O/186/07 52Kb