Crunching down on deadlines: Nestlé trade mark revoked after late filing

This article first appeared in WTR Daily, part of World Trademark Review, in July 2024. For further information, please go to www.worldtrade markreview.com.

• Nestlé filed a notice of defence and counterstatement form in response to a non-use revocation action at the UKIPO the day after the prescribed deadline
• Argued the delay was due to technical difficulties and other unfortunate extenuating circumstances
• Registrar declined to exercise discretion and admit the notice of defence and counterstatement; Nestlé's mark to be revoked, subject to appeal

A recent decision of the UK Intellectual Property Office (UKIPO) registrar (O/0540/24) emphasises the importance of filing notice of defence and counterstatement forms within the specified deadline, as the scope to admit such forms filed late into proceedings is extremely limited.

Background

On 11 October 2023, KBF Enterprises Ltd filed an application to revoke Nestlé's registered CRUNCH trade mark on the basis of non-use. The tribunal set a deadline of 12 February 2024 for Nestlé to file a notice of defence and counterstatement.

An associate at Nestlé's representative firm filed a notice of defence and counterstatement on the morning of 13 February 2024 (i.e., the day after the prescribed deadline). The tribunal notified the parties that the late defence was not admitted, and that the non-use action would be treated as undefended.

Nestlé requested a hearing to challenge this decision. Its evidence included a witness statement from the partner with ultimate responsibility for the matter, not the associate directly involved.

The firm explained that while there were some technical issues, the delay was primarily due to human error and that an unfortunate confluence of events meant that its usually robust deadline management system had failed.

There were two matters involving the same parties with deadlines on the same day. The relevant associate had failed to meet the deadline in the present matter as he was focused on the other.

While the partner had received reminders on both deadlines, he failed to recognise that they related to separate matters. The partner had also been distracted by personal circumstances on the day, which led to him not checking with the associate on the matter.

A senior associate, who also had responsibility for the matter, was on holiday on the day concerned and no cover had been allocated. CMS argued the above formed an extenuating circumstance should allow the late filing to be accepted.

Decision

The hearing officer noted that certain time limits listed in Schedule 1 of the Trade Mark Rules 2008, including the time limit to file a notice of defence and counterstatement, are generally non-extendible except where there is a fault on the part of the UKIPO.  Nevertheless, the registrar does retain a discretion to allow the extension of such deadlines where there are extenuating circumstances, which justify the exercise of the discretion in the owner’s favour.

The factors to be considered in exercising such discretion are set out in Music Choice Ltd's Trade Mark [2006] and include: 

• the circumstances relating to the missing of the deadline, including reasons why it was missed and the extent to which it was missed;
• the nature of the applicant’s allegations in its statement of grounds;
• the consequences of treating the owner as opposing or not opposing the application;
• any prejudice caused to the applicant by the delay; and
• any other relevant considerations, such as the existence of related proceedings between the same parties.

The hearing officer concluded that the delay was due to human error, not technical issues, and that there was no compelling reason to justify the fact that the notice of defence and counterstatement was forgotten about and filed late by the relevant associate.  Subsequently, the notice of defence and counterstatement was not admitted into the proceedings, and Nestlé's mark is to be revoked, subject to appeal.

Comment

This decision confirms that Schedule 1 deadlines – including deadlines to file a notice of defence and counterstatement – are treated strictly by the UKIPO. Although the registrar retains a discretion, such discretion will only be exercised in very limited circumstances.  It was further noted that the evidence filed by Nestlé's representatives came in the form of a witness statement from the relevant partner, but not the associate directly responsible for the deadline. This evidence was attacked as hearsay by KBF Enterprises and considered unhelpful by the hearing officer in respect of the principal failure by the associate.

With thanks to Megan McDermott, work experience student, for her contribution to this article.