Trade mark decision

BL Number

O/390/00

Decision date

16 October 2000

Hearing officer

Mrs J Smith

Mark

BAT OUT OF HELL

Classes

09, 16, 25, 41

Applicants

Meat Loaf

Opponents

Nicholas Dynes Gracey

Opposition

Opposition deemed abandoned in error

Result

Opposition deemed abandoned in error. Request to reinstate opposition refused.

Points Of Interest

• 1. In this case the Hearing Officer utilised the DUCATI case in deciding what action to take in relation to an irregularity in procedure under Rule 60. The Appointed Person took a somewhat different line in the ANDREAS STIHL case see BL O/379/00.
• 2. Mr Gracey appealed the Hearing Officer’s decision and the Appointed Person (Mr Hobbs) (BL O/231/01) gave notice in writing under Section 76(3) that it appeared to him that the pending appeal by Mr Gracey involved a point of general legal importance relating to the scope of the Registrar’s power to correct irregularities in procedure under Rule 66 of the Trade Mark Rules 2000 (formerly Rule 60 of the Trade Mark Rules 1994). An interim decision staying the appeal for 12 weeks and for the determination of the appeal in the ANDREAS STIHL case (BL O/231/01) was given.
• 3. The Appointed Person heard the appeal and issued his decision on 19 September 2001 (BL O/455/01). The proceedings were remitted to the Registrar for a fresh decision in the matter.

Summary

The applicant’s application was advertised on 27 March 1996 and formal opposition was lodged by way of Form TM 7 on 27 June 1996. The applicants filed a counterstatement and asked for confirmation that the opposition related only to Classes 16 and 25. This led to correspondence between the Office and Mr Gracey, the upshot being that the Office set a deadline for requesting an extension of time to file evidence and despite the fact that Mr Gracey said that he wished to rely on oral submissions at the hearing, the opposition was deemed abandoned.

Subsequently the Office decided that the opposition had been abandoned in error and an ex-gratia payment equating to the opposition fee was paid to MrGracey. The Office however, decided that it was not possible to re-open matters since the applicants mark was on the Register. Any further action would have to be by way of Invalidity.

In her decision the Hearing Officer concluded that the opposition proceedings had indeed been abandoned in error since the opponent had met the office practice directions as set down in the Trade Marks Journal 6102. The Hearing Officer also accepted that there had been an irregularity in procedure as set down in Rule 60 of the Trade Mark Rules 1994 but decided, with reference to the DUCATI case [1998] RPC 7, that the Registrar had no power to re-open proceedings since the registration process in respect of the mark at issue was completed and it was now on the Register.

A further request by the opponent for an interlocutory hearing to discuss these proceedings was refused because of the excessive period of time which had occurred since the original adverse decision.

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