Appeals to the Appointed Person in the UK – a RARE case of success  relating to a missed counterstatement

Appeals to the Appointed Person in the UK – a RARE case of success relating to a missed counterstatement

As discussed in previous reports – successful appeals before the Appointed Person in the UK are uncommon.   This successful appeal related to a failure by the proprietor of a registration to file a timely defence to an invalidity application.

The framework used by the UK IPO is fairly forgiving in most circumstances but the two month period for submitting a defence to an invalidity application (or other inter party proceedings such an opposition) cannot be extended and the late submission of a defence requires the discretion of the UK IPO.

In this case an application was filed to invalidate UK00003459704 for the mark RARE of Tropical Tang Foods Limited (TTF).  TTF was not represented before the UK IPO or the Appointed Person and they submitted their defence on 31 October 2020, missing the deadline by 5 days.  The UK IPO has discretion to allow the late filing of a defence if there are extenuating circumstances or compelling reasons but at a hearing on 21 March 2021 discretion was refused.

TTF appealed and the case was heard by Geoffrey Hobbs QC O/767/21.  TTF attributed the missed deadline to the COVID-19 pandemic, and gave a number of reasons why their business continued to be significantly affected by the pandemic more than six months after the initial lockdown.  These reasons were not sufficient for the Hearing Officer who indicated that issues such as resolving supply chain difficulties, homeworking and furloughed staff were issues that many businesses had faced but, for the most part, did not prevent them from meeting deadlines before the UK IPO.

There are a number of decisions that demonstrate that general reference to disruption caused by the pandemic is not sufficient to merit discretion. What the applicant for discretion needs to do is to focus on is the specific impact of the pandemic (or other disruption) on their business.   However, TTF had given detailed reasons why the pandemic continued to significantly disrupt their business but these reasons were incorrectly generalised and dismissed by the Hearing Officer so the appeal was allowed.  TTF had correctly focussed on  the specific impact of the pandemic on their business rather than merely referring to the pandemic in general terms which has been held repeatedly to be insufficient justification for the exercise of discretion – see for example KAKES Trade Mark O/549/20 and TIGER (DEVICE) Trade Mark O/067/21.

All these cases relate to requests from unrepresented parties – it is highly unlikely that a mistake by an attorney firm could be excused due to the disruption caused by the pandemic.

Comparing this case with a decision on the same issue by Geoffrey Hobbs QC in TESCON O/240/20 shows that missing this deadline by a short period is not itself relevant to the exercise of discretion and neither are the consequences of missing the deadline.  In TESCON the deadline was missed by seven days, rather than five, and the consequences of the missed deadline were more significant.  However, that appeal was not allowed as the explanation for the delay was not sufficient.

As time passes it will become increasingly unlikely that the pandemic will provide a valid basis for the exercise of discretion, but the principles of any request remain the same – the reasons for requesting discretion must be detailed and specific to the circumstances.

If you would like to discuss this topic, you can contact the writer, or another member of our expert trade mark team.

Category: Latest Insights | Author: Ian Gill | Published: | Read more