The tribunal was asked whether an assignee of a trademark should be substituted in existing opposition proceedings for the assignor. The assignment had taken place after the proceedings had begun.
Held: A tribunal has an inherent power to regulate its own proceedings. Pumfrey J: ‘Turning to the present case, I must first deal with the question whether the three-month time limit on oppositions was, as the hearing officer decided in this case, . . being circumvented. In my judgment, it plainly is not. Once the proceedings are on foot the time limit has ceased to be relevant to those proceedings at all.’ After referring to Industrie Chimiche Italia Centrale, Pumfrey J continued: ‘The effect of a substitution is that the party substituted carries on the original proceedings. He does not, by reason of substitution, become entitled to plead, if the pleadings are over, or file evidence, if the evidence is in, otherwise than by making application in the same manner as the original opponent would be obliged to apply if it wished to be allowed to revisit the pleadings or the evidence. No question of circumventing any time limit arises. So I do not think that to permit substitution offends against the requirements of the Act requiring an opposition to be started within three months of publication.’
Judges:
Pumfrey J
Citations:
[2000] RPC 536
Jurisdiction:
England and Wales
Citing:
Cited – Industrie Chimiche, Italia Centrale and Another v Alexander G Tsavliris and Sons Etc ComC 19-Jul-1995
Procedure – RSC Order 20 r.5 – amendment with leave – mistake – mistake as to identity of person intending to sue – mistake as to name of that party – distinction – Procedure- RSC Order 20 r.5(3) – amendment with leave – discretion – RSC Order 6 . .
Cited by:
Cited – Rhone-Poulenc Rorer International Holdings Inc and Another v Yeda Research and Development Co Ltd ChD 16-Feb-2006
The patent application had been presented to the European Patent Office and granted only after 13 years. The claimant now appealed refusal to allow amendment of its claim to allow a claim in its sole name. The defendant argued that it was out of . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 30 June 2022; Ref: scu.245173