Victorian Plumbing Ltd v Victoria Plumb Limited (see O/510/18) considers the circumstances in which it is or is not appropriate for a Hearing Officer to accept a late-filed defence of an application in opposition proceedings. In normal circumstances, missing the deadline to file a Notice of Defence and Counterstatement is fatal to the application.
The case concerned an application by Victorian Plumbing Limited to register a series of three marks, which was opposed by Victoria Plumb Limited. The Applicant did not file its Notice of Defence and Counterstatement by the official deadline set by the UK IPO, so the UK IPO issued a preliminary view advising the parties that it was minded to deem the Application abandoned. A Hearing was then appointed to discuss the issue.
At the Hearing, the Applicant’s representatives made two points. Firstly, it argued that if the Application were deemed abandoned, the Applicant would simply re-file a new application, to which it would be open to the Opponent to object and which would put all parties to additional costs and inconvenience. Secondly, it argued that the Registry should exercise its discretion to accept the late-filed defence because this would allow this opposition to be consolidated with two other oppositions between the same parties and dealt with together.
The Opponent’s representatives only commented briefly and said that the Opponent would not strongly object to the Notice of Defence being accepted late. The parties also confirmed that there were ongoing negotiations and that they were considering settlement.
In the decision, the Hearing Officer sets out the law regarding late-filed Notices of Defence/Counterstatements (see Rule 18 of the Rules). We are reminded that the discretion is narrow and can only be exercised if there are “extenuating circumstances” and “compelling reasons”.
The Hearing Officer took into account the circumstances leading to the missed deadline (presented as being entirely the fault of the Applicant’s representatives) and the nature of the Opponent’s allegations in its Statement of Grounds (not entirely without merit). The Hearing Officer also noted that if the Application were deemed abandoned, then the prejudice to the Applicant is obvious. The consequence of allowing the late filed documents in was that the opposition would be consolidated with the other cases. The Hearing Officer also considered that the Opponent did not identify any specific prejudice to itself resulting from the delay, bearing in mind the parties were already in settlement discussions. Finally, the Hearing Officer considered and agreed with both parties that this particular matter should be consolidated with the other two oppositions.
The Hearing Officer exercised her discretion and allowed the late-filed documents to be accepted.
It seems that there are two general scenarios where the Registry would be minded to exercise its discretion in allowing a late filed Notice of Defence/Counterstatement. The first relates to exceptional situations, for example where the applicant can prove serious medical conditions (e.g. stroke, serious heart operation). The second relates to “obvious” errors on the part of the Applicant’s representatives, for example, when there are multiple related oppositions and the representatives fail to consolidate correctly or fails to request an extension of time correctly.
Circumstances in which the Hearing Officer would not exercise its discretion in allowing a late filed Notice of Defence/Counterstatement include situations where the Applicant is self-represented or the Applicant claims to have been involved in settlement discussions with the Opponent or even if the Applicant claims to have undergone serious business troubles, e.g. loss of staff. These situations by themselves will generally not be sufficient to persuade the Hearing Officer to exercise its discretion.