Lowden v Lowden Guitar Company Ltd

Under rule 31(3) of the Trade Marks Rules 2000, the Registrar has a discretion whether to treat a proprietor’s opposition to a revocation application as withdrawn when the counter-statement is filed late. That discretion does not permit the Registrar to extend the mandatory time limit or create an alternative procedure which circumvents the Rules. The proprietor cannot defend the factual basis of a non-use application through a late counter-statement, but the Registrar may consider material filed out of time insofar as it identifies an independent defect or issue which could prevent revocation. A revocation order made from a legally impermissible date is an error of law, not a clerical error. Amendment of the grounds to substitute a permissible date requires fresh service and a new period for filing the counter-statement.

The Appellant was proprietor of a UK trade mark for the LOWDEN device. The Respondent applied to revoke it for non-use under section 46(1)(a) and (b) of the Trade Marks Act 1994. The proprietor’s Form TM8 and counter-statement were filed five days late. The Registrar treated the opposition as withdrawn and ordered revocation with effect from 20 October 1999.

That date preceded the earliest permissible revocation date, 20 October 2000. The appeal challenged the date, the failure to exercise the discretion under rule 31(3), and the absence of an opportunity to be heard under rule 54. The Respondent sought substitution of the 2000 date and amendment of its grounds.

1. The appeal was allowed. The Registrar’s order of 7 May 2004 was set aside. Revocation from 20 October 1999 was legally impossible because the statutory five-year period began on completion of the registration procedure. The error was substantive and could not be corrected under CPR rule 40.12.

2. Rule 31(3) conferred a discretion because it provided that the Registrar may treat the proprietor’s opposition as withdrawn. The discretion did not permit an extension of the unextendable period in rule 31(2). Once that period had expired, the evidential procedure in rules 31(4) to (8) could not be initiated. The Registrar could not use an invented procedure, such as that adopted in Firetrace Trade Mark [2002] RPC 15, to admit a late counter-statement and factual evidence.

3. The Registrar was nevertheless required to decide whether the application should be treated as unopposed and whether revocation necessarily followed. Material filed late could be considered only so far as it identified an issue capable of defeating or affecting revocation despite the absence of a defence on the alleged non-use. The proprietor was entitled to a hearing under rule 54 on those matters. The disputed factual case concerning use under a licence could not be pursued.

4. The approach in Pharmedica GmbH’s Trade Mark Application [2000] RPC 536 confirmed that procedural powers could not be exercised inconsistently with express statutory provisions. The reasoning in Firetrace Trade Mark concerning a discretion to admit a late defence was not followed in the context of rule 31.

5. The Respondent’s request to amend its Statement of Grounds could not be granted on appeal without giving the proprietor the opportunity to file a counter-statement within a fresh period under rule 31(2). The revocation application was remitted to the Registrar to determine the amendment application. If amendment was refused, the revocation application would be dismissed. Pending that determination, the Register was to be rectified by removing the entry recording revocation.

The judgment describes an appeal from the Registrar’s decision of 7 May 2004 revoking the LOWDEN registration. The appeal was heard by the High Court, which set aside the Registrar’s order and remitted the revocation application for consideration of an amendment to the grounds.