Storm (Trade Mark: Revocation): IPO 4 Jul 2007

Interlocutory Hearing re the filing of part of Form 8, Counterstatement and exhibits by way of email
Incomplete documents filed in defence of registration by email: Appeal allowed. Registered Proprietor allowed to defend its registration
Points Of Interest
The filing of documents by email is allowed
An application for revocation of the mark in suit was filed and the proprietor was allowed until 16 January 2007 to file a defence. On 16 January the registered proprietor filed the first page of Form TM8, a counterstatement and exhibits by way of email. The registry indicated that the papers and method of filing were not acceptable and the proprietor’s attorney filed a properly completed TM8 on 25 January 2007. Following further correspondence the registered proprietor requested a hearing.
After hearing the two parties the Hearing Officer indicated by letter that the filing of documents by email was not precluded by the Trade Marks Act and Rules. She also went on to exercise the Registrar’s discretion under Section 31(3) to allow the registered proprietor a short period to put its evidence into acceptable format and to defend its registration. The applicant for revocation asked for a statement of the grounds for the Hearing Officer’s decision.
The Hearing Officer dealt with the acceptability of the filing of document by email, by comparison with the filing of documents by facsimile, and decided that this method was not precluded. She took account of the fact that this method has been allowed by the Courts since the introduction of The Civil Procedure (Amendment) rules 2002 (Rule 4).
Mrs A Corbett
[2007] UKIntelP o18607, O/186/07
Trade Marks Act 1994 31(3)

Updated: 03 April 2021; Ref: scu.456730