Permanent Secretary, Ministry of Energy, Commerce and Tourism, Republic of Cyprus v John & Pascalis Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Arnold |
| Judgment Date | 28 November 2018 |
| Neutral Citation | [2018] EWHC 3226 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: CH-2018-000140 |
| Date | 28 November 2018 |
[2018] EWHC 3226 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS
CHANCERY APPEALS LIST (CHANCERY DIVISION)
Rolls Building
Fetter Lane, London, EC4A 1NL
Mr Justice Arnold
Case No: CH-2018-000140
Simon Malynicz QC (instructed by Clifford Chance LLP) for the Appellant
Amanda Michaels (instructed by MW Trade Marks Ltd) for the Respondent
Brian Nicholson (instructed by the Treasury Solicitor) for the Comptroller-General of Patents, Designs and Trade Marks
Hearing date: 15 November 2018
Judgment Approved
Introduction
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”):
i) a decision of Raoul Colombo dated 2 May 2018 to cancel UK Trade Mark No 1,451,888 (“the Trade Mark”) in the name of the Ministry pursuant to an unopposed application for a declaration of invalidity by John & Pascalis Ltd (“the Cancellation Decision”); and
ii) a decision of Carl White dated 23 May 2018 refusing an application by the Ministry for an extension of time (“the Rule 77 Decision”).
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 statutory framework
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).”
Factual background
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...
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