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

This is an appeal by the Permanent Secretary of the Ministry of Energy, Commerce and Tourism of the Republic of Cyprus (“the Ministry”) against two decisions of officers acting on behalf of the Registrar of Trade Marks (“the Registrar”):

The Registrar has, somewhat unusually, exercised his right to be appear and be heard on the appeal pursuant to section 74(b) of the Trade Marks Act 1994 (“the Act”) because the appeal raises an important issue concerning the Registrar’s powers under the Act and the Trade Marks Rules 2008 (“the Rules”).

The relevant provisions of the Rules are as follows:

“Application for invalidation: filing of application and counter-statement; section 47 (Forms TM8 & TM26(I))

41.(1) An application to the registrar for a declaration of invalidity under section 47 shall be filed on Form TM26(I) and shall include a statement of the grounds on which the application is made and be accompanied by a statement of truth.

…

(5)

The registrar shall send a copy of Form TM26(I) and the statement of the grounds on which the application is made to the proprietor.

(6)

The proprietor shall, within two months of the date on which a copy of Form TM26(I) and the statement was sent by the registrar, file a Form TM8, which shall include a counter-statement, otherwise the registrar may treat the proprietor as not opposing the application and registration of the mark shall, unless the registrar otherwise directs, be declared invalid.

…

Setting aside cancellation of application or revocation or invalidation of registration: (Form TM29)

43.(1) This rule applies where –

…

(c)

the registration of a mark is declared invalid under rule 41(6),

and … the proprietor … claims that the decision of the registrar to … declare the mark invalid … (‘the original decision’) should be set aside on the grounds set out in paragraph (3).

(2)

Where this rule applies, …. the proprietor shall, within a period of six months beginning with the date that the … register was amended to reflect the … declaration of invalidity …, file an application on Form TM29 to set aside the decision of the registrar and shall include evidence in support of the application and shall copy the form and the evidence to the other party to the original proceedings under the rules referred to in paragraph (1).

(3)

Where … the proprietor demonstrates to the reasonable satisfaction of the registrar that the failure to file Form TM8 within the period specified in the rules referred to in paragraph (1) was due to a failure to receive … Form TM26(I) …, the original decision may be set aside on such terms and conditions as the registrar thinks fit.

(4)

In considering whether to set aside the original decision the matters to which the registrar must have regard include whether the person seeking to set aside the decision made an application to do so promptly upon becoming aware of the original decision and any prejudice which may be caused to the other party to the original proceedings if the original decision were to be set aside.

Decisions subject to appeal; section 76(1)

70.(1) Except as otherwise expressly provided by these Rules an appeal lies from any decision of the registrar made under these Rules relating to a dispute between two or more parties in connection with a trade mark, including a decision which terminates the proceedings as regards one of the parties or a decision awarding costs to any party (‘a final decision’) or a decision which is made at any point in the proceedings prior to a final decision (‘an interim decision’).

…

Alteration of time limits (Form TM9)

77.(1) Subject to paragraphs (4) and (5), the registrar may, at the request of the person or party concerned or at the registrar’s own initiative extend a time or period prescribed by these Rules or a time or period specified by the registrar for doing any act and any extension under this paragraph shall be made subject to such conditions as the registrar may direct.

(2)

A request for extension under this rule may be made before or after the time or period in question has expired and shall be made –

(a)

where the application for registration has not been published and the request for an extension relates to a time or period other than one specified under rule 13 and is made before the time or period in question has expired, in writing; and

(b)

in any other case, on Form TM9.

(3)

Where an extension under paragraph (1) is requested in relation to proceedings before the registrar, the party seeking the extension shall send a copy of the request to every other person who is a party to the proceedings.

(4)

The registrar shall extend a flexible time limit, except a time or period which applies in relation to proceedings before the registrar or the filing of an appeal to the Appointed Person under rule 71, where –

(a)

the request for extension is made before the end of the period of two months beginning immediately after the data the relevant time or period expired; and

(b)

no previous request has been made under this paragraph.

(5)

A time limit listed in Schedule 1 (whether it has already expired or not) may be extended under paragraph (1) if, and only if –

(a)

the irregularity or prospective irregularity is attributable, wholly or in part, to a default, omission or other error by the registrar, the Office or the International Bureau; and

(b)

it appears to the registrar that the irregularity should be rectified.

(6)

In this rule –

‘flexible time limit’ means –

(a)

A time or period prescribed by these Rules, except a time or period prescribed by the rules listed in Schedule 1; or

(b)

A time or period specified by the registrar for doing any act or taking any proceedings; and

“proceedings before the registrar” means any dispute between two or more parties relating to a matter before the registrar in connection with a trade mark.

Schedule 1

…

rule 41(6) (counter-statement for invalidity)

rule 43(2) (setting aside … invalidation of registration)

…

rule 77(4) (period for making a retrospective request to extend a flexible time period).”

The following account of the factual background is based in part on the relevant documents, in part on evidence filed by the Ministry in support of its application for an extension of time and in part on evidence filed by the Ministry which it seeks to have admitted on the appeal. Although John & Pascalis resists the admission of that evidence, it does not object to the Ministry relying upon the chronology of events revealed by the evidence; indeed, it relies upon that chronology itself.

The Ministry applied to register the Trade Mark on 22 December 1990, and it was registered on 22 February 2002. The Trade Mark is a certification mark consisting of the word HALLOUMI registered in respect of the following goods in Class 29:

“Cheese made from sheep’s and/or goat’s milk; cheese made from blends of cow’s milk; all included in Class 29.”

At the time of filing, the Ministry filed regulations, as it was required to do in respect of a certification mark by virtue of paragraph 6(2) of Schedule 2 to the Act. These have been updated from time to time. The current regulations prescribe certain conditions regarding the production of a speciality Cypriot cheese in accordance with particular standards governing composition and method of manufacture. The Ministry does not use, and is not in law permitted to use, the Trade Mark itself.

At various times prior to 2011, the Ministry used the addresses of its regular UK solicitors, Clifford Chance, and of the trade mark attorneys Chancery Trade Marks, as its address for service of documents from the Registrar relating to the Trade Mark. The address for service appears to have changed in 2011 to the Ministry’s own offices in Nicosia, and this remained the address for service at all times relevant to this appeal. Since the events giving rise to this appeal, Clifford Chance has been restored as the Ministry’s representative and the address for service changed back to Clifford Chance’s offices.

The Trade Mark was recently renewed by the Ministry for a 10-year period ending on 22 December 2027.

On 22 December 2017 John & Pascalis filed three separate applications to invalidate or revoke the Trade Mark under sections 46 and 47 of the Act. John & Pascalis had given no advance warning to the Ministry of its intention to apply to cancel or revoke the Trade Mark, not having been required to do so under the Rules. One of the applications was Cancellation No. 501922 on Form TM26(I), seeking a declaration of invalidity pursuant to sections 3(1)(b) and/or (d) of the Act (“the Application”).

By a letter dated 18 January 2018, which was received and opened by the Ministry on 2 February 2018, the Intellectual Property Office (“the IPO”) informed the Ministry that one of the other applications had been filed, but that the applicant still needed to regularise it.

By a letter dated 26 January 2018 the IPO wrote to the Ministry serving the Application and explaining that the Ministry had two months in which to file a Form TM8 and counterstatement. The letter stated in bold:

“The TM8 and counterstatement must be received on or before 26 March 2018.

…

In accordance with rule 41(6) if the TM8(N) and counter-statement are not filed within this period, (a period which cannot be extended), the registration of the mark shall, unless the register otherwise directs, be declared invalid in whole or part.”

The letter of 26 January 2018 was received by the Ministry at the latest on 9 February 2018. The Ministry’s evidence is that the letter was read by at least two officials in the Ministry on 9 February 2018 and that, on or shortly after that date, a third official instructed a fourth official to forward the letter to the Law Office of the Republic of Cyprus; but that instruction was not actioned, and so no Form TM8 or counterstatement was filed.

Where no TM8 is filed in time, it is the practice of the IPO (as set out in paragraph 3.4.7 of the Registrar’s Manual of Trade Mark Practice) to write to the trade mark proprietor giving it an additional 14-day period in which to request a hearing or provide written reasons as to why the Registrar should exercise the discretion vested in him to treat the application as defended. A letter was duly written to the Ministry on 5 April 2018 (“the April Letter”) saying:

“The official letter dated 26 January 2018 informed you that if you wished to continue with your registration you should file the Form TM8 and counterstatement on or before 26 March 2018.

As no TM8 and counterstatement have been filed within the time period set, Rule 41 (6) applies. Rule 41 (6) states that:

‘… Otherwise the registrar may treat the proprietor as not opposing the application and registration of the mark shall, unless the registrar otherwise directs, be declared invalid.’

The registry is minded to treat the proprietor as not opposing the application for invalidation and declare the registration as invalid as no defence has been filed within the prescribed period.

If you disagree with the preliminary view you must provide full written reasons and request a hearing on, or before, 19 April 2018. This must be accompanied by a witness statement setting out the reasons as to why the TM8 and counterstatement are being filed outside of the prescribed period.

If no response is received the registry will proceed to issue a short decision on the issue of failure to comply with the Rules governing the filing of a defence.”

The Ministry’s evidence is that the April Letter was only received on 26 April 2018. According to that evidence, the April Letter was sent by an official in the Ministry to an official in the Department of Registrar of Companies and Official Receiver, who received it on 30 April 2018. On 7 May 2018 the latter official sent the April Letter back. The April Letter was not received by the correct department within the Ministry until 9 May 2018.

In the meantime, the IPO had issued the Cancellation Decision on 2 May 2018. In the Cancellation Decision Mr Colombo noted that no counterstatement had been filed by 26 March 2018 and no response to the April Letter had been received. In those circumstances he held as follows:

“Under the provisions of the rule, the Registrar can exercise discretion. In this case, no reasons have been given why I should exercise this discretion in favour of the registered proprietor and I therefore decline to do so.

As the registered proprietor has not responded to the allegations made, I am prepared to infer from this that they are admitted.

Therefore, in accordance with Section 47(6) of the Act, the registration is declared invalid and I direct that it be removed from the register …”

The Ministry received the Cancellation Decision on 9 May 2018 (i.e. the same day on which the April Letter was received by the correct department within the Ministry). On that date, which was a Wednesday, the Ministry contacted Clifford Chance about the matter. The partner responsible, Vanessa Marsland, was in a meeting all that day, but responded the following day.

On Monday 14 May 2018 Clifford Chance acting on behalf of the Ministry filed a Form TM9R requesting a retrospective extension of the time period set in the April Letter pursuant to rule 77 of the Rules until 14 days from notification of the extension of the deadline. The purpose of this application was to allow the Ministry in due course to request that the Registrar exercise his discretion to treat the Ministry as opposing the application under rule 41(6) of the Rules notwithstanding that it had missed the original deadline for filing the TM8 and counterstatement. The application for an extension of time was supported by a short witness statement from Aliki Iordanou of the Ministry explaining that the April Letter had not been received until 26 April 2008 and why no action had been taken in response to it until 9 May 2018. The application made it clear that, if the extension of time was granted, the Ministry intended to file further evidence and/or submissions directed to the exercise of the Registrar’s discretion under rule 41(6).

On 23 May 2018 Mr White, on behalf of the Registrar, sent the Rule 77 Decision to Clifford Chance, in which he stated:

“.. I would point out firstly contrary to what is said on Form TM9R, the period for filing a Form TM8 is NOT an extendable period (see Schedule 1 to the Trade Mark Rules 2008).

The fact that a decision has been issued in this case declaring the above mark to be invalid means the Registry is now functus officio. If the registered proprietor wants an opportunity to defend the registration its only course of action is to appeal the Registry’s decision to declare the registration invalid for lack of a defence. The period allowed for any appeal remains set for 30 May 2018.”

On receipt of this letter Ms Marsland telephoned Mr White to explain that the application for an extension of time did not relate to the deadline for filing the TM8, but rather the deadline of 19 April 2018 set in the April Letter. In addition, she requested that the Cancellation Decision be “rescinded”. She confirmed these points in a letter sent later the same day.

On 30 May 2018 the Ministry filed an appellant’s notice against the Cancellation Decision and the Rule 77 Decision.

On 14 June 2018 Mr White replied to Ms Marsland stating that the Registrar was still of the view that the Cancellation Decision “can only be set aside by an appellate body” and noting that an appeal had been filed.

On 18 July 2018 the Ministry filed an application notice seeking permission to adduce further evidence on its appeal in the form of a witness statement of Ms Marsland and a second witness statement of Ms Iordanou. The former explains what Clifford Chance did after being contacted by the Ministry on 9 May 2018. The latter explains why the TM8 and counterstatement were not filed in time, as briefly summarised above. She also says that the Ministry was very busy with other pressing matters at the time. Finally, she comments on the grounds of invalidity asserted in the Application and explains the significance of the Trade Mark to Cyprus and to authorised users of the Trade Mark. In that regard she notes, among other things, that the Trade Mark is being relied upon by the Ministry in proceedings pending before the General Court and Court of Justice of the European Union.

Although the Ministry’s ultimate objective on this appeal is to reverse the Cancellation Decision, it may find it easier to do so if it can first overturn the Rule 77 Decision, obtain an extension of time for responding to the April Letter and adduce its further evidence as part of that response. It therefore makes sense to consider the Rule 77 Decision first.

Before turning to the reasons given for refusing an extension of time in the Rule 77 Decision, it is convenient first to address a submission advanced by counsel for John & Pascalis which amounts to an additional reason for supporting the Rule 77 Decision (although John & Pascalis did not serve a Respondent’s Notice as it should have). She submitted that the 14-day period specified in the April Letter was inextensible, because it was part and parcel of the rule 41(6) process and the time limit in rule 41(6) was inextensible. I do not accept this. The time limit specified in rule 41(6) is a time limit imposed by the Rules for the purpose of filing the TM8 and counterstatement. The time limit specified in the April Letter was a time limit imposed by the Registrar for the purpose of filing submissions concerning the Registrar’s exercise of his discretion under rule 41(6). The time limits come from different sources and have different purposes. Schedule 1 to the Rules specifies that the rule 41(6) time limit is inextensible, whereas it is clear from rule 77(1), (4) and (6) that time limits set by the Registrar are extendable.

Counsel for the Ministry submitted that Mr White was wrong to refer in the Rule 77 Decision to the time for filing TM8 not being an extendable period given that the application was for an extension of the deadline set by the April Letter, which as discussed above was extendable. I agree with this, but it does not affect the principal reason which Mr White gave for refusing the application, which was that the Registrar was functus officio following the Cancellation Decision.

As Burnett LJ (as he then was) stated when delivering the judgment of the Divisional Court in R (on the application of Demetrio) v Independent Police Complaints Commission [2015] EWHC 593 (Admin), [2015] PTSR 1268 at [36] (a statement unaffected by the subsequent decision of the Court of Appeal in that case):

“Functus officio means no more than that a judicial, ministerial or administrative actor has performed a function in circumstances where there is no power to revoke or modify it. It is a Latin tag still in universal use and usually abbreviated to the short statement that someone is ‘functus’.”

Counsel for the Ministry submitted that Mr White was in error and that the Registrar did have power to revoke or modify the Cancellation Decision. The only basis he gave for this submission was that the Registrar retained power under rule 77 to extend time for responding to the April Letter, which necessarily carried with it the power to reconsider the Cancellation Decision.

I do not accept this submission. Rule 43 confers a specific power on the Registrar to set aside a cancellation decision in specified circumstances; but, as counsel for the Registrar pointed out, this is not relied upon by the Ministry. Unlike CPR rule 3.1(7), the Rules confer no general power on the Registrar to revoke or vary his own decisions. Nor does the Registrar have any inherent power to do so, since his powers are derived from the Act and the Rules. No such power can be derived from the Registrar’s interstitial power to regulate procedure before him, which was described by Pumfrey J in Pharmedica Gmbh's Trade Mark Application [2000] RPC 536 at 541 as follows:

“Notwithstanding the fact that the registrar is, like the county court, a tribunal which is established by statute, I have no doubt that the registrar has the power to regulate the procedure before her in such a way that she neither creates a substantial jurisdiction where none existed, nor exercises that power in a manner inconsistent with the express provisions conferring jurisdiction upon her.”

Rule 77 does not confer any power on the Registrar to revoke or vary his own decisions, nor is such a power implicit in it. On the contrary, it is implicit in rule 77 that the Registrar only has the power to extend time in proceedings which are still extant in the sense that no final decision has yet been taken. Once a final decision has been taken, the Registrar is functus and the only remedy open to a party adversely affected by that decision (other than an application under rule 43) is to appeal pursuant to rule 70(1). Moreover, to construe rule 77 in the manner suggested would be inconsistent with the specific and limited express power contained in rule 43.

As counsel for the Registrar pointed out, the ability to treat final decisions as final and to reject attempts to re-open them in one way or another by administrative action is very important to the practical operation of the IPO. The Trade Marks Registry alone presently handles more than 4,000 trade mark opposition, cancellation and revocation proceedings every year. Over half of those applications are undefended. Allowing the respondents to such applications to attempt to contest them after adverse decisions had been issued would create a substantial additional burden on the IPO.

Accordingly, I conclude that, save to the limited extent that the Registrar retained the power to entertain an application under rule 43, Mr White was correct to decide in the Rule 77 Decision that the Registrar was functus in relation to the Application after the Cancellation Decision and thus had no power to grant the Ministry an extension of time for responding to the April Letter.

I would add that the Ministry’s case for an extension of time was a weak one anyway. Counsel for the Ministry relied upon the fact that the Ministry’s address for service was in Cyprus and hence the April Letter had not arrived until after the time for replying to it had expired. As counsel for the Registrar pointed out, however, it would be burdensome for the IPO to have to give parties different time limits for responding to official communications such as the April Letter depending on their address for service. If parties choose to give addresses for service outside the UK, then they must accept the consequential delays in receiving such communications. The Ministry could have provided the IPO with an email address for correspondence in addition to the postal service address, but it did not. In any event, even once the Ministry had received the April Letter, it failed to take action in response to it for 13 days and did not file its application for an extension of time until 18 days had passed. If it had responded more quickly, it could have filed a response before the Cancellation Decision was taken and applied for a retrospective extension of time for filing that response at the same time.

After initially disputing the proposition, counsel for the Ministry eventually accepted that, if Mr White was right that the Registrar was functus after the Cancellation Decision, then the Cancellation Decision and the Ministry’s application to adduce further evidence on appeal had to be considered on the footing that the Rule 77 Decision was correct.

Where no Form TM8 and counterstatement are filed within the two months allowed, rule 41(6) confers a discretion on the Registrar to treat the proprietor of the trade mark as not opposing the application. In Music Choice Ltd’s Trade Mark [2006] RPC 13 Geoffrey Vos QC sitting as a Deputy High Court Judge (as he then was) considered the principles applicable to the exercise of the discretion under the predecessor provision, rule 33(6) of the Trade Mark Rules 2000 and concluded:

“65.

Having decided that there is a general discretion in the registrar, it would be inappropriate to set out factors which would circumscribe the exercise of that discretion. Plainly, however, the discretion must be exercised on the premise that the time limit in r.33(6) is inextensible, and that there must be compelling reasons for the proprietor to be treated as opposing the application, notwithstanding his failure to comply with an inextensible time limit.

...

67.

The factors that are, in my judgment, relevant to the exercise of the discretion in this case include:

(1)

The circumstances relating to the missing of the deadline including reasons why it was missed and the extent to which it was missed.

(2)

The nature of the applicant's allegations in its statement of grounds.

(3)

The consequences of treating the proprietor as opposing or not opposing the application.

(4)

Any prejudice caused to the applicant by the delay.

(5)

Any other relevant considerations, such as the existence of related proceedings between the same parties.”

Counsel for the Registrar pointed out that, since Music Choice was decided, the Rules have changed in at least two material respects, namely the introduction of rules 43 and 77(5). In my judgment the introduction of these rules confirms that the Registrar, and the Court or Appointed Person on appeal, should be insistent upon the presence of compelling reasons for the trade mark proprietor to be treated as opposing the application, notwithstanding its failure to comply with an inextensible time limit. I am not persuaded that it justifies the adoption of any more restrictive approach than that.

Counsel for John & Pascalis drew attention to a number of decisions of the Appointed Person concerning the exercise of the discretion under rule 41(6) or similar provisions in the Rules. The first is Wicked Vision Ltd’s Trade Mark Application (O/035/11), a case in which the applicant had failed to file its Form TM8 in time because the person responsible for dealing with the matter within its organisation had not been passed the official letter from the IPO enclosing the Form TM7. There was no irregularity on the part of the IPO, but an organisational problem in the applicant’s office. The proceedings were opposition proceedings, but rule 18(2) is in the same terms as 41(6). On receipt of the IPO letter giving it the chance to make representations, the applicant had requested the Registrar to exercise his discretion to treat it as opposing the opposition. The hearing officer declined this request. Geoffrey Hobbs QC sitting as the Appointed Person refused the applicant’s appeal, saying:

“7.

The deadline of 20 February 2010 for filing the Applicant’s Form TM8 and Counter-statement was not a ‘flexible time limit’ within the meaning of that expression as used and defined in Rule 77. It was a time limit prescribed by a Rule listed in Schedule 1 to the 2008 Rules. It was therefore governed by the restriction contained in Rule 77(5):

…

Since there was no basis on which the Applicant could seek to invoke the power conferred upon the Registrar by Rule 77(5), the deadline of 20 February 2010 was final and binding upon it.

8.

… the Applicant failed to comply with the applicable deadline. The effect of such failure is spelled out in Rule 18(2) in the following terms (with emphasis added):

Where the applicant fails to file a Form TM 8 or counter-statement within the relevant period, the application for registration, insofar as it relates to the goods or services in respect of which the opposition is directed, shall, unless the registrar otherwise directs, be treated as abandoned.

9.

The words I have emphasised enable the Registrar to provide an applicant for registration with the opportunity to defend an opposition that would otherwise be treated as well-founded for lack of any defence. They only enable the Registrar to make such an opportunity available if there are extenuating circumstances sufficient to justify the exercise of his discretion in favour of doing so. They do not enable the Registrar simply to extend the fixed period of two months within which an applicant for registration is entitled to file a defence as of right in accordance with the provisions of Rules 18(1) and 18(3).

…

15.

… it was plain on the facts that the Applicant had been the author of its own misfortune. There had been no adherence to any system or procedure for checking and dealing with registered letters. The official notification had been mislaid because the minimal degree of vigilance required to prevent that from happening was not exercised. Even though the Applicant knew there was a risk of opposition by Kickz with a deadline of 11 December 2009 for filing the Form TM 7 and Grounds of Opposition, it did nothing to monitor the risk. In short, there were no extenuating circumstances for its failure to comply with the requirements of Rules 18(1) and 18(3). The Hearing Officer’s decision to that effect was correct.”

Although Mr Hobbs did not refer to Music Choice, his decision is entirely consistent with it.

In Mark Holland’s Trade Mark Applications (O/050/12), another case under rule 18(2), Amanda Michaels sitting as the Appointed Person suggested that, to make sense of the concept of an inextensible deadline, it must be distinguished from rules which set flexible deadlines:

“31.

In addition to [the] guidance [in Music Choice], it seems to me that the manner in which a discretion to extend an inextensible deadline should be exercised may helpfully be contrasted with the way in which the Registrar exercises the discretion to extend an extendible deadline. In Siddiqui (O/481/00) Mr Thorley QC said at p. 7 that it was incumbent on the party requesting the extension of a flexible deadline to put forward facts which merited the extension:

‘In a normal case this will require the applicant to show clearly what he has done, what he wants to do and why it is that he has not been able to do it. This does not mean that in an appropriate case where he fails to show that he has acted diligently but that special circumstances exist an extension cannot be granted. However, in the normal case it is by showing what he has done and what he wants to do and why he has not done it that the Registrar can be satisfied that granting an indulgence is in accordance with the overriding objective and that the delay is not being used so as to allow the system to be abused. … In principle matters should be disposed of within the time limit set out in the Rules and it is an exceptional case rather than the normal case where extensions will be granted.’

As a result, a party seeking such an extension of time is expected to give full and detailed reasons for the request and, in particular, to explain the delay.

32.

It is all the more incumbent on someone seeking an extension under Rule 18(2) to give full and detailed reasons for the request, to show what he has done, etc and to set out in proper detail any ‘extenuating circumstances’ relied upon.”

I agree with this, save that a request under rule 18(2) or 41(6) is not a request for an extension of time, it is a request to be treated as opposing the application even though no TM8 has been filed in time. As Mr Vos pointed out in Music Choice at [52] this is not the same as an extension of time, although it may in practice have the same effect.

In Caviar Holdings Inc’s Trade Mark (O/255/18), a case under rule 38(6), Thomas Mitcheson QC sitting as the Appointed Person agreed with what Ms Michaels had said in Mark Holland’s Trade Mark Applications at [32]. Caviar Holdings was a case in which the proprietor had instructed solicitors, who had instructed counsel, and later trade mark attorneys, yet no clear explanation was given as to how the deadline had been missed. Mr Mitcheson upheld the hearing officer’s refusal to exercise his discretion in favour of the proprietor, saying at page 14:

“I consider that the burden is a high one on a proprietor who has missed a deadline to provide a full explanation as to why the deadline was missed, including exhibiting relevant correspondence, which goes further than the requirements that Mr Thorley set out in Siddiqui.”

Similarly, in C3 Inc’s Trade Mark (O/394/18) Emma Himsworth QC sitting as the Appointed Person agreed at [34] with what Ms Michaels had said in Mark Holland’s Trade Mark Applications at [32]. She upheld a refusal to exercise the discretion under rule 41(6) saying at [36] that “it is plain … that the holder has been the author of its own misfortune”. The proprietor had decided at a very late stage to seek the applicant’s agreement to a stay. Although the applicant agreed to this, the request for a stay was not filed until after close of business on the Friday before the Monday on which the Form TM8 was not due, and no Form TM8 was filed in time. The proprietor’s representatives seem to have wrongly believed that filing the request for a stay would somehow obviate the need to file the Form TM8.

If the Cancellation Decision is considered in the absence of the Ministry’s further evidence, it is plain that it is unimpeachable. Not only had the Ministry failed to file a Form TM8 or counterstatement within the statutory time limit, but also it had failed to respond to the April Letter. Over five weeks had elapsed since the expiry of the statutory time limit and nearly two weeks had passed since the deadline set by the April Letter. In those circumstances Mr Colombo was clearly correct to exercise his discretion to treat the Ministry as not opposing the Application. In the absence of any opposition from the Ministry, he was clearly correct to accede to the Application and declare the Trade Mark invalid. I did not understand counsel for the Ministry seriously to argue to the contrary.

I turn finally to consider the Ministry’s application to adduce further evidence on appeal. Although I refer to this evidence for convenience as “further evidence”, it is in fact the only evidence from the Ministry directed to the exercise of the rule 41(6) discretion as opposed to the application for an extension of time under rule 77.

The principles to be applied to such applications were recently considered by Henry Carr J in Consolidated Developments Ltd v Cooper [2018] EWHC 1727 (Ch). He summarised the principles at [33] as follows:

“i)

the same principles apply in trade mark appeals as in any other appeal under CPR Part 52. However, given the nature of such appeals, additional factors may be relevant;

ii)

the Ladd v Marshall factors are basic to the exercise of the discretion, which are to be applied in the light of the overriding objective;

iii)

it is useful to have regard to the Hunt-Wesson factors;

iv)

relevant factors will vary, depending on the circumstances of each case. Neither the Ladd v Marshall factors nor the Hunt-Wesson factors are to be regarded as a straightjacket;

v)

the admission of fresh evidence on appeal is the exception and not the rule;

vi)

the Gucci decision does not establish that the Court or the Appointed Person should exercise a broad remedial discretion to admit fresh evidence on appeal so as to enable the appellant to re-open proceedings in the Registry; and

vii)

where the admission of fresh evidence on appeal would require that the case be remitted for a rehearing at first instance, the interests of the parties and of the public in fostering finality in litigation are particularly significant and may tip the balance against the admission of such evidence.”

The first Ladd v Marshall factor is that it must be shown that the evidence could not have been obtained with reasonable diligence for use at the trial or hearing or other determination. Counsel for John & Pascalis submitted that the Ministry had failed to establish this. I accept that submission. The focus here is upon the Ministry’s actions after receipt of the April Letter since the exercise of the rule 41(6) discretion only arises because the statutory deadline had been missed. As discussed above, if the Ministry had responded more quickly to the April Letter, it could have filed a response before the Cancellation Decision was taken and applied for a retrospective extension of time for filing that response at the same time. I appreciate that only five days elapsed between the Ministry’s receipt of the April Letter and the Cancellation Decision, and only two of those were business days. On receipt of the April Letter, however, the Ministry ought to have seen from the Letter that: (i) it had missed the deadline of 26 March 2018 for filing the Form TM8 and counterstatement; (ii) the Registrar was therefore minded to treat it as not opposing the Application and to declare the Trade Mark invalid; and (iii) the deadline of 19 April 2018 for filing submissions as to why the Registrar should not do so had passed a week before. In those circumstances the Ministry should have treated the matter as urgent and contacted Clifford Chance immediately. While it may not have been possible to file all of the further evidence within such a short space of time, I consider that it would have been possible to file some of it with the remainder to follow. Instead, the Ministry’s internal procedures were so disorganised that the April Letter was forwarded to the wrong Department and nothing was done until 9 May 2018.

The second Ladd v Marshall factor is that the evidence must be such that it would probably have an important influence on the result of the case. Counsel for John & Pascalis submitted that this requirement was not satisfied either. Again, I accept that submission. The key aspect of the evidence for these purposes is the explanation proffered by the Ministry for missing the deadline for filing the Form TM8 and counterstatement, particularly bearing in mind that it had been forewarned by the letter dated 18 January 2018, which it received on 2 February 2018, that an application to cancel the Trade Mark had been made, although the applicant was required to regularise it. As counsel for the Registrar pointed out, the Supreme Court held in Barton v Wright Hassall LLP [2018] UKSC 12, [2018] 1 WLR 1119 that unrepresented parties were not entitled to any greater indulgence than represented parties when it came to complying with rules of court. The same goes for complying with the Rules. I have summarised in paragraph 12 above the explanation which is given by the Ministry in the further evidence. That evidence simply demonstrates that the Ministry was the author of its own misfortune. The Ministry’s internal procedures were so disorganised that the letter enclosing the Application was passed from official to official after receipt on 9 February 2018, but no action was taken. In my judgment this evidence fails to establish any extenuating circumstances for the Ministry’s failure to meet the statutory deadline. In those circumstances the other aspects of the further evidence cannot provide a sufficient basis for the exercise of the rule 41(6) discretion in the Ministry’s favour.

The third Ladd v Marshall factor is that the evidence must be apparently credible. There is no dispute as to this.

Counsel for the Ministry relied strongly on some of the other factors which Laddie J indicated were of relevance in Hunt Wesson Inc’s Trade Mark Applications [1996] RPC 234, namely the nature of the Trade Mark (here a certification mark), the nature of the objections to it (which he submitted that the Ministry would have a real prospect of successfully rebutting, although he acknowledged that this would require detailed evidence and legal argument), the absence of prejudice to John & Pascalis and the public interest (which he submitted favoured the maintenance of the Trade Mark). I do not accept that there would be no prejudice to John & Pascalis if the fresh evidence were admitted, since it would necessitate the remission of the case to the Registrar in order for the Registrar to consider the exercise of his discretion in the light of that evidence. Thus John & Pascalis would suffer delay, and potentially costs, which it would not have had to suffer if the evidence had been filed prior to the Cancellation Decision. I accept that each of the other factors has some weight, but in my judgment they come nowhere near to justifying the admission of the further evidence given that the first two Ladd v Marshall criteria are not satisfied.

Accordingly, the application to adduce further evidence is refused.

For the reasons given above, the appeal is dismissed