On 17 November 2004, the Chancery Division of the English High Court delivered its judgment in Lowden v Lowden Guitar Company Limited [2004] EWHC 2531 (Ch).
In this case, the Claimant, Mr Lowden, was the registered proprietor of a mark in respect of "Guitars; acoustic guitars; parts and fittings for all the aforesaid goods". On 31 December 2003, the Defendant company, a manufacturer of guitars, filed an application in the UK Trade Mark Registry alleging non-use under s46(1)(a) and s46(1)(b) of the Trade Marks Act 1994.
In a letter of 9 January 2004, the Registry informed the Claimant of the application for revocation, the burden on the registered proprietor to show what use has been made of the mark and the three month deadline to do so. The Appellant failed to comply with the 9 April deadline and sent his counter-statement to the Registry on 15 April. The Registry responded to the receipt of the counter-statement by a letter stating that the counter-statement was received outside the period allowed and therefore the opposition to the application for revocation was deemed withdrawn.
On 7 May 2004, the Claimant was informed of the decision made by the Hearing Officer to revoke the registration with effect from 20 October 1999, as requested in the Defendant’s application. However, the Defendant was not entitled under s46(1) to seek revocation of the mark from a date earlier than 20 October 2000, since registration of the trade mark was not completed before 20 October 1995.
As a consequence, the Claimant filed a notice of appeal on the following three main grounds: (i) the Registrar’s order to revoke the mark from a date earlier than any date which was permissible under s46(1)(a) should be set aside since he had no jurisdiction to make it; (ii) the Registrar had not exercised the required discretion under TMR rule 31(3); and (iii) the decision to revoke was taken without giving the Claimant an opportunity to be heard, contrary to TMR rule 54.
It was held that once the time for filing the counter-statement had expired, the Registrar had no discretion under TMR rule 31(3) to consider the proprietor’s evidence of use. However, it was open to the Registrar to consider material submitted out of time to determine whether there were other reasons which might enable a proprietor to continue to oppose an application for revocation, such as a defect in the statement of grounds which the Claimant could have raised, had he been given the opportunity to be heard according to TMR rule 54.
In addition, it was held that the incorrect date of revocation of 20 October 1999 instead of 20 October 2000 was not a clerical mistake, but a misunderstanding of the law. As a consequence, the error was one of substantive law, which could only be corrected on appeal. The amended statement of grounds would have the effect of causing time to run again and the Claimant would be entitled to file a counter statement which raised the factual issues.
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