"Tribunal Practice Notice (4/2010)
Opposition Proceedings - Calculation of the opposition period
1. This practice notice is to clarify the calculation of the date by which an opposition must be filed under section 38(2) of the Trade Marks Act 1994 (as amended) and confirms the dates by which the defence and/or request to enter cooling off must be received at the Registry.
2. The Registrar has reviewed the periods normally allowed under the Trade Marks Rules 2008 (as amended) and has come to the following conclusions:
Period for filing a TM7a or TM7
3. Rule 17 of the Trade Marks Rules 2008 states -
17.-(1) Any notice to the registrar of opposition to the registration, including the statement of the grounds of opposition, shall be filed on Form TM7.
(2) Unless paragraph (3) applies, the time prescribed for the purposes of section 38(2) shall be the period of two months beginning with the date on which the application was published. (Emphasis added)
(3) This paragraph applies where a request for an extension of time for the filing of Form TM7 has been made on Form TM7A, before the expiry of the period referred to in paragraph (2) and where this paragraph applies, the time prescribed for the purposes of section 38(2) in relation to any person having filed a Form TM7A (or, in the case of a company, any subsidiary or holding company of that company or any other subsidiary of that holding company) shall be the period of three months beginning with the date on which the application was published. (Emphasis added)
4. The term ‘beginning with’ requires that the publication date be included in the calculation of the opposition period (as opposed to periods starting ‘from’ where the day of the initiating event is excluded from the calculation). Explanations of the interpretation of wording in respect of time periods can be found in Trow v Ind. Coope (West Midlands) Ltd CA  2 All ER 900, at paragraph 915 and Zoan v Rouamba  2 All ER 620, at paragraph 24.
5. According to the Interpretation Act 1978 a month means a calendar month. It appears from Halsbury's Laws of England that:
"When the period prescribed is a calendar month running from any arbitrary date the period expires with the day in the succeeding month immediately preceding the day corresponding to the date upon which the period starts: save that, if the period starts at the end of a calendar month which contains more days than the next succeeding month, the period expires at the end of the latter month."
6. Consequently, where an opposition is made under section 38(2), or an extension is requested to the opposition period under Rule 17(3), the opponent should ensure that it is filed, at the latest, on the day immediately preceding the day corresponding to the date two months after the date of publication. For example, a trade mark advertised in the trade mark journal on 24 September 2010 would have a latest date of 23 November 2010 by which to file an opposition on a TM7 or request an extension to the opposition period on a TM7a.
7. Rule 18 of the Trade Marks Rules 2008 (as amended) states -
18.-(1) The applicant shall, within the relevant period, file a Form TM8, which shall include a counter-statement.
(2)Where the applicant fails to file a Form TM8 or counter-statement within the relevant period, the application for registration, insofar as it relates to the goods and services in respect of which the opposition is directed, shall, unless the registrar otherwise directs, be treated as abandoned. (Emphasis added)
(3) Unless either paragraph (4), (5) or (6) applies, the relevant period shall begin on the notification date and end two months after that date. (Emphasis added)
8. The notification date is the date on which the notice of opposition is sent to the applicant, i.e. the date of the Registrar's letter serving the TM7 on the applicant.
9. Although Rule 18 also uses the formulation ‘beginning with’ it sets the period for filing a defence as two months ‘after that date’, which is analogous with ‘from that date’. As a consequence the period for filing a defence on form TM8 begins on the notification date and ends two months after that date, making the period 2 months and 1 day in total. For example, a trade mark applicant who was sent notification of an opposition on 24 September 2010 would have a latest date of 24 November 2010 by which to file a defence.
10. When a trade mark is published on a day with a number which has no equivalent in the later month because it is a shorter month, the period for filing a defence ends on the last day of the later month. For example, if a TM7 is served on 31 July 2011, the period for filing a defence will end on 30 September 2011.
11. Rule 18 of the Trade Mark Rules 2008 (as amended) also provides the periods within which a TM9c to enter the cooling off period and a TM9e to extend the cooling off period must be filed.
12. The relevant provisions are as follows -
18(4) … and where this paragraph applies the relevant period shall begin on the notification date and end nine months after that date. (emphasis added)
18(5) … and where this paragraph applies the relevant period shall begin on the notification date and end eighteen months after that date. (emphasis added)
13. In both cases the wording is comparable to that used in Rule 18(3), discussed above at paragraph 9. Therefore, the dates should be calculated as nine months (in respect of a TM9c) and eighteen months (in respect of the TM9e) after the notification date. This means that the cooling off period will end on a day which has the same number as the day in the month 9 or 18 months earlier when the Registrar sent the TM7 to the applicant or, where no such date exists because the later month has fewer days, on the last day of the later month.
Application of this practice to existing proceedings
14. As a consequence of the Registry’s revised view of the Trade Marks Rules 2008 there are a number of opposition cases currently before the Tribunal which were filed late.
15. The Registrar intends to regard any TM7A/TM7 (admitted up to and including the date of this notice), which was filed late, according to the interpretation of Rule 17, expressed in this notice, as having been the subject of an irregularity of procedure partly attributable to an error by the Office. This is due to the fact that guidance material including the Manual of Trade Marks Practice and the Opposition booklet supplied by the Registry and published on our web site contain inaccurate wording in respect of the calculation of time periods for filing opposition proceedings and extensions of time for doing so. The appropriate guidance has now been updated in line with this notice.
16. The Registrar does not intend to initiate a review of the admissibility of any TM7/7A already filed. If the matter of lateness is raised by either of the parties to an opposition the Registrar proposes to use the powers in Rule 74 and 77(5) to extend any relevant time limit retrospectively, so that it expires on the date that was understood to be the final date for filing a TM7/TM7A under the previous guidance.
17. If, within 14 days of the publication of this notice, any party wishes to argue that they have been prevented from filing a new TM7/TM7A on time because of earlier inaccurate guidance from the Office, they should write to the Registry accordingly and ask for the matter to be corrected as an irregularity in procedure. The Registrar will only consider such cases where the date for filing a new TM7/TM7A has passed. Each case will be assessed on its merits.
Right to appeal
18. In accordance with Rule 70 of the Trade Marks Rules 2008, a decision to correct the above irregularity would not bring proceedings to a conclusion or result in an award of costs. Therefore, any party seeking to appeal a decision to continue with the proceedings will have to seek the Registrar's leave to do so independently of the final decision on the opposition.
Contact for enquiries
19. Please direct any enquiries about this notice to:
Deputy Head of Tribunal Section
Intellectual Property Office
Tel: +44 (0) 1633 814585
Fax: +44 (0) 1633 811175"
To read the TPN in its original, please click here