Permanent Secretary, Ministry of Energy, Commerce And Tourism & Anor v John & Pascalis Ltd

A registrar’s power to extend a time limit under rule 77 of the Trade Marks Rules 2008 ends when final proceedings have been determined, subject only to the specific setting-aside power in rule 43. The registrar then becomes functus officio, and the affected party’s remedy is an appeal under rule 70. A missed, inextensible deadline for filing a counter-statement may nevertheless be overcome only where compelling or extenuating circumstances justify treating the proprietor as opposing the application. Fresh evidence on appeal remains exceptional and must satisfy the Ladd v Marshall criteria, considered in the light of the overriding objective.

The Ministry appealed against two decisions concerning its UK certification mark for HALLOUMI. The Registrar declared the registration invalid after the Ministry failed to file a Form TM8 and counter-statement within the period prescribed by rule 41(6) of the Trade Marks Rules 2008, and later refused an application under rule 77 to extend the period allowed for responding to a warning letter.

The Ministry contended that the Registrar retained power to extend that period and sought to adduce evidence explaining its failures. The central issues were whether the Registrar was functus officio after the invalidity decision, whether the rule 41(6) discretion should have been exercised, and whether further evidence should be admitted on appeal.

1. Rule 77 and functus officio. The 14-day period specified by the Registrar for submissions concerning the exercise of the rule 41(6) discretion was distinct from the inextensible period for filing the Form TM8. It was therefore, in principle, extendable under rule 77. But rule 77 did not confer power to revoke or vary a final decision. The Registrar’s powers derived from the Trade Marks Act 1994 and the Trade Marks Rules 2008. Rule 43 provided the specific setting-aside power, and there was no equivalent general power to vary decisions. Once the invalidity decision had been made, the Registrar was functus officio, save for rule 43; the proper remedy was an appeal under rule 70.

2. Rule 41(6) discretion. The court approved the approach in Music Choice Ltd’s Trade Mark: the inextensible deadline required compelling reasons before the proprietor could be treated as opposing the application. Relevant considerations included the reason for and extent of the default, the allegations, the consequences of treating the application as defended or undefended, prejudice caused by delay, and other relevant circumstances. The authorities concerning extenuating circumstances and detailed explanations were consistent with that approach.

3. Application to the invalidity decision. The Ministry had missed both the statutory deadline and the subsequent opportunity to explain the default. On the material before the Registrar, there was no basis for exercising the discretion in its favour. The invalidity decision was therefore unimpeachable.

4. Fresh evidence. Applying Ladd v Marshall and the principles summarised in Consolidated Developments Ltd v Cooper, the evidence could reasonably have been obtained for use before the Registrar. Its explanation showed disorganised internal procedures rather than extenuating circumstances and was unlikely to alter the result. Although the evidence was credible and some other factors had weight, delay, additional costs and the need for remission also favoured refusal. The application to adduce further evidence was refused.

5. Disposition. The appeal against both decisions was dismissed.

• High Court (Chancery Division): appeal from decisions of officers acting for the Registrar of Trade Marks. The appeal against the Rule 77 decision and the invalidity decision was dismissed.