Decision to revoke LOWDEN guitar mark struck out

The High Court of England and Wales has allowed an appeal against the UK Trademark Registry's decision to revoke the mark LOWDEN.

George Lowden applied to register LOWDEN in respect of "guitars; acoustic guitars; parts and fittings for the aforesaid goods; all included in Class 15 [of the Nice Classification]" on October 20 1994. The registration procedure was completed exactly a year later, on October 20 1995. On December 31 2003 Lowden Guitar Company Limited (LGCL) filed an application for revocation, alleging non-use under Section 46(1)(a) and (b) of the UK Trademarks Act 1994. It sought revocation with effect from October 20 1999.

Rule 31 of the Trademarks Rules 2000 sets out the current Registry procedure for such revocation actions. Under Rule 31(2), Lowden should have filed a prescribed form, a counterstatement and evidence of use (or reasons for non-use) within three months of the date on which the registrar sent him the papers filed by LGCL. The registrar does not have the power to extend the three-month time limit. In this case, the three-month deadline expired on April 9 2004. Lowden's agents filed a counterstatement and the applicable form on April 15. The counterstatement alleged use by LGCL during the period of a licence agreement between the parties, but no accompanying evidence was filed. These failures appear to have been attributable to Lowden's agents.

The Registry sent a standard form letter noting that Lowden had filed out of time and that therefore the opposition to the revocation application was deemed withdrawn.

On April 23 LGCL's agents wrote to the Registry noting that they had made an error in requesting revocation from October 20 1999, since the five-year non-use period under Section 46 ran from the date of completion of the registration procedure - October 20 1995. Despite this, the Registry later wrote to Lowden's agents confirming its decision to revoke the mark with effect from October 20 1999.

On appeal to the High Court, the judge first noted that Rule 31(3) of the Trademarks Rules 2000 gives the registrar a discretion as to whether to treat a mark owner's failure to file the correct documents within the prescribed period as withdrawal of its opposition to the application for revocation. In this case, the judge indicated that the hearing officer had accepted that he had failed to appreciate he had such a discretion.

The judge went on to consider the circumstances in which the discretion of the registrar under Rule 31(3) should be exercised. In doing so, he considered an earlier decision of the Registry, FIRETRACE Trademark (2000 RPC 15), in which the hearing officer had considered the circumstances in which an analogous discretion in the rules applicable to revocation applications under Section 41(c) and (d) should be exercised. The judge rejected the approach taken by the hearing officer in that case, which had looked at factors more relevant to the question of whether to allow an extension of time, such as length of and reasons for the delay and prejudice to the applicant for revocation. The judge expressly stated, in this context, that the exclusion of a power to extend time for compliance with certain rules "is obviously capable of working injustice and ought to be reconsidered".

In the judge's opinion, the correct approach would have been for the Registry to allow Lowden a hearing if he wished to challenge revocation. If, at the hearing, he had been able to show grounds as to why the application for revocation should not be made - other than the facts relating to alleged use - then the hearing officer could have exercised discretion in favour of Lowden and not ordered revocation. The fact that LGCL had requested revocation from too early a date was such a ground.

As to the date of revocation, the current Registry practice is that parties wishing to amend statements of case and counterstatements should seek leave to do so, each application being considered on its facts. For the purposes of the appeal, the judge accepted that this procedure was within the powers of the registrar. He concluded that, in the circumstances of this case, the correct approach once the problem of the date of revocation had come to light would have been for the Registry to treat LGCL's letter about the revocation date as an application for leave to amend to insert the correct date, triggering a new period for Lowden to serve a counterstatement if leave was granted. The case was remitted to the Registry on that basis.

Apart from the specific resolution of the issues of the case, a longer term result may be for the registrar to be granted discretionary powers to extend time limits that are currently non-extendible. If these powers are granted, the Registry can be expected to exercise this discretion sparingly, but to use it to avoid cases of injustice.

Vanessa Marsland, Clifford Chance, London