RULE 31. "(1.) A notice of opposition to the regis- Notice of tration of a trade-mark shall state the ground or opposition. grounds on which the opponent intends to oppose the registration, and be signed by him or by his solicitor, and shall also contain an address for service in the United Kingdom, and shall be in the Form J. (0) in the second schedule to these rules, with such variations as circumstances may require. trade-mark already on the register. "(2.) Where the ground, or one of the grounds, of Opposition on opposition is that the applicant is applying for the the ground of registration of a trade-mark identical with one already on the register with respect to the same goods or description of goods, or having such resemblance to a trade-mark already on the register with respect to such goods or description of goods as to be calculated to deceive, the notice shall state the date of registration, and the number on the register of such trademark already on the register (p). "(3.) Within two months after the expiration of Opponent's one month or such further time not exceeding three evidence. months as the comptroller may allow from the date of the advertisement of the application, the opponent shall leave at the Patent Office, Trade-Marks Branch, such evidence by way of statutory declaration (2) as he may desire to adduce in support of his opposition and deliver to the applicant copies thereof. "(4.) Within one month from the delivery of the Applicant's opponent's copies of his statutory declarations (r) the applicant shall leave at the Patent Office, Trade-Marks Branch, his evidence (s) by way of statutory declaration in answer, and deliver to the opponent copies thereof, and within seven days from such delivery the (0) Appendix, p. 610. (p) Sect. 72, Chap. X., p. 176. The date and number can be ascertained by inspecting the register. (1) See Rule 61, p. 605. (r) Ibid. (s) The applicant's counter-statement must be sent to the Comptroller within one month after the receipt of notice of opposition, or such further time as the Comptroller may allow, sect. 69 (2). evidence. Evidence in reply. Closing of evidence. Applications for leave to adduce further evidence. Appointment of time for hearing. Disallowance of opposition in certain cases. "opponent shall leave at the Patent Office, Trade-Marks Branch, his evidence by way of statutory declaration in reply and deliver to the applicant copies thereof. Such last-mentioned evidence shall be confined to matters strictly in reply. "(5.) No further evidence shall be left on either side except by leave of the comptroller upon the written consent of the parties duly notified to him, or by special leave of the comptroller given on an application made to him. 66 (6.) Either party making such application shall give notice thereof to the opposite party, who shall be entitled to oppose the application. 66 "(7.) On the completion of the evidence, the comptroller shall, upon application by either party, upon Form E. (f) in the Second Schedule to these Rules, and upon payment of the prescribed fee (u), appoint a time for the hearing of the case, and shall give the parties at least seven days' notice of such appointment. (8.) On the hearing of the case no opposition shall be allowed in respect of any ground not stated in the notice of opposition, and where the ground or one of the grounds of opposition is that registration is being applied for in respect of a trade-mark identical with one already on the register, with respect to the same goods or description of goods, or having such resemblance to a trade-mark already on the register with respect to such goods or description of goods as to be calculated to deceive, the opposition shall not be allowed upon such ground, unless the date of registration and the number on the register of the trademark already on the register have been duly specified in the notice of opposition (x). "(9.) The decision of the comptroller in the case shall be notified to the parties." (t) Appendix, p. 608. (u) £1, see p. 606, below. (x) Cf. Rule 31 (2), supra. The order of procedure upon an opposed application for Summary of registration is summarised in the following table:— (1) Application (y). [(2) Notice of refusal of comptroller to entertain the application (). (3) Notification by applicant to the comptroller that he intends to be heard, five days from receipt of (2) (≈). (4) Ten days' notice of appointment for hearing from comptroller to applicant. (5) Notice of appeal to Board of Trade, one month from decision of comptroller, with grounds of appeal and case in support (a)]. (6) Advertisement of application (b). (7) Notice of opposition, one month from advertisement. Notice to be in duplicate, with grounds of opposition, and address in United Kingdom, and to be signed by opponent or his solicitor (c). (8) Counter-statement, one month from receipt of (7) from comptroller. To be in duplicate with grounds of application (d). (9) Opponent's evidence, three months from advertise ment (6). To be by statutory declaration delivered at the Patent Office. Copies of the declarations to applicant. (10) Applicant's evidence in answer, one month from receipt of (9). To be by statutory declarations and copies as (9). (11) Opponent's evidence in reply, seven days from receipt of (10). Statutory declarations and copies as (9). (12) Notice of appeal to Board of Trade, one month from decision of comptroller, with grounds of appeal and case in support (e). (y) Page 68. Form F., p. 608. () Page 67. Form E., p. 608. (a) Rules 20-26, below, p. 79. (b) Page 69. (c) Form J., Appendix, pp. 610, 635. (d) See form in Appendix, p. 636. procedure on an opposed application. Objections not contained in the notice Forms of the several notices and other documents referred to in the above table are set out in the Appendix, pp. 635 to 641. The last four sub-sections of sect. 69 were introduced by the Act of 1888, and they have the effect of assimilating the procedure upon an opposition to that upon the application before the advertisement (sect. 62). Under the Act of 1883, as it originally stood (f), the opponent was required to give security for costs, or was deemed to have withdrawn his opposition. If he duly gave security the case was not, as it now is, determined by the comptroller in the first instance, subject to appeal to the Board of Trade and reference to the Court, but was referred to the Court at once (g). The alteration was made, and the power for the comptroller to give the opponent costs of an abandoned application was conferred upon the recommendation of Lord Herschell's Committee. It is somewhat curious that no provision has been made to give the applicant costs of an unsuccessful opposition before the comptroller (h). It will be seen that the comptroller in determining the case is, under the Rule 31 (8), restricted to the objections of opposition. raised by the opponent's notice. It is said, however, that the Court must, upon an appeal to it, consider all objections to the registration of the mark (i). And it does not follow that the comptroller will necessarily register a mark, even where he is obliged to disallow the opposition to it, if, as it is submitted is the case, his discretion (1) to refuse to register remains exerciseable, until the registration has been actually effected. Amendments and enlarge The comptroller's powers under sect. 91 and Rules 54 and 55 to amend clerical errors in connection with any by the comp- application for registration, and to allow the amendment ment of times troller. (f) Sect. 69 (3) and (4). ed., p. 434. (h) See p. 86, below. (k) Under sect. 62, see p. 63, above. any document, drawing, or representation of a trademark, for the amendment of which no special provision is made by the Acts, and to enlarge the times prescribed by the rules for doing any act or taking any proceeding thereunder, have already been stated (1). Under Rule 54, it seems that a notice of opposition may be amended, even though the amendment raises an entirely new case of fraud against the applicant. So, in Moët's Trade-Mark (m), where the comptroller's deputy had refused to amend an opposition on the ground that he had no power, and notwithstanding that he had also expressed an opinion that, as it was directed to charge fraud against the applicant, it could not be made "without detriment to his interests," and that on the merits it ought not to be allowed, the Divisional Court directed a mandamus to the comptroller to hear and determine the application to allow the amendment, and Mathew, J., said he thought it ought to be made. The Registrar (sitting for the comptroller) has held that he has no jurisdiction to allow an amendment of a notice of opposition after the expiration of the three months mentioned in sect. 69, or after the case has been heard and disposed of before the comptroller. In the case in question (n), the opponent in the course of an appeal to the Courts asked for leave to amend his notice, but this, Stirling, J., held, he had no jurisdiction to grant, and the opponent then made a similar application to the registrar, with the result already stated. Where an appeal is contemplated, it is essential, therefore, that any amendment of the application or notice of opposition which is considered material should be made before the case is determined by the comptroller. Grounds of Opposition. The reasons for refusing to register a mark which is propounded for registration are dealt with in detail else (1) Page 71, above, cf. also Rule 53 (power to dispense with evidence), Appendix, p. 603. () 7 R. P. C. 226 (1890), Mathew and Grantham, JJ. (n) Robertson, Sanderson & Co.'s Tm., (1892) 2 Ch. 245; 9 R. P. C. 264. |