Amendment to notice of opposition allowed in YELLOW PAGES Case


In Yell Ltd v Truvo Belgium Comm.V (October 16 2008), the acting controller has allowed Truvo Belgium Comm.V's application to amend its notice of opposition against the registration of the trademark THE ONE AND ONLY YELLOW PAGES.

The predecessor in title of Yell Ltd, the well-known local search engine, applied to register the mark THE ONE AND ONLY YELLOW PAGES in Classes 35, 38, 41 and 42 of the Nice Classification. The application was accorded an application date of July 1 1996 and claimed priority from May 1 1996. On advertisement, the application was opposed by Truvo Belgium Comm.V, a local search and advertising company. 

The matter came for hearing before the acting controller on March 6 2008. Truvo indicated that it proposed to rely on:
  • a number of earlier trademarks referred to in the notice of opposition; and
  • at least one trademark which was not mentioned in the notice of opposition, but was referred to in Truvo’s evidence. 
Yell objected and the acting controller directed that the hearing be adjourned to allow Truvo to make a written request for amendment to the notice of opposition specifying:
  • the precise nature of the amendment required; and
  • the reason why the material sought to be introduced had not been included in the notice as originally filed. 
Truvo duly applied to amend the notice of opposition. It sought to amend the notice of opposition by adding:
  • a Community trademark registration for GOLDEN PAGES (applied for on April 1 1996) in Classes 9, 16, 35 and 38; and
  • a trademark application for YELLOW PAGES filed on April 1 1996. 
The effect of the proposed amendment would thus be to introduce into the notice of opposition a Community trademark registration and a trademark application, both of which predated the date of priority of the present application. 
Rule 18 of the Trademark Rules 1996 provides that a notice of opposition must be sent to the controller within three months of the date of publication of the application. No extension of this period will be allowed. Rule 75 gives the controller the power to permit the amendment of documents, with the proviso that the latter must not direct that any period of time specified in the Trademarks Act 1996 or the Trademark Rules be altered. 
The controller was of the view that an amendment of a notice of opposition might be allowed pursuant to Rule 75 even where the effect of the amendment may be to introduce new grounds of opposition after the elapse of time prescribed in Rule 18. According to the controller, Rule 75 should be given a purposive interpretation and the proviso should be construed strictly so as to prohibit the latter only from directing an actual alteration of a period of time specified in the act or the rules in purported exercise of his powers under Rule 75. The controller concluded that it had discretion under Rule 75 to allow the requested amendment, notwithstanding that the time prescribed in Rule 18 had elapsed and that the grounds sought to be introduced to the notice of opposition were known to Truvo when it filed the opposition. 
The acting controller thus decided to allow the amendment in the manner sought by Truvo. 
Patricia McGovern, DFMG Solicitors, Dublin

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