UKIPO grants time extension on Marriott v Oskia TM dispute
Written by Ellis Sweetenham on 02 May 2019« Return to Reading Room
With all disputes, not just those involving IP, it must always be in the mind of both parties to solve the matter as quickly and cost effectively as possible.
With all litigation, all parties must show they have actively sort to come to a compromise before putting the matter before a court.
Specifically in relation to IP, there are time periods put in to the process, actively pushing the two parties to come to a compromise.
On the flipside, while the Government bodies dealing with IP such as the UK and EU Intellectual Property Offices must follow the rules to ensure consistency, they must also amend their actions to avoid any unnecessary costs.
In a recent case, the UKIPO took a lenient approach for this particular purpose.
The case in question is between hotel brand Marriott, specifically in relation to their Renaissance Hotels chain and skincare brand Oskia and their Renaissance range.
Marriott filed an invalidation application against Oskia’s brand on the grounds that it conflicted with their earlier registered mark.
In response to this invalidation application, Oskia was informed that they must file form TM8 if they wish to oppose the invalidation application.
However, Oskia filed form TM9C which is used in opposition proceedings to allow both parties further time to negotiate.
As form TM9C is not used in respect of invalidation proceedings, and Oskia’s deadline had passed, the invalidation should have been successful in default.
However, the UKIPO appreciated that there was intent there but a procedural failure, therefore they allowed them an extension of time to submit their position and explain the issue.
This was accepted by the Office and held there was a compelling reason for the late filing. The matter has now been stayed for the parties to reach a resolution.
This is a reminder that the procedure and deadlines are very important- another reason why it is highly recommended you bring in an IP expert from the start to ensure all the details and procedures are noted and followed.
If you need any further advice, please get in touch with the IP team today.
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