Cyprus has lost the halloumi trademark in the UK essentially because of a change of address and because crucial correspondence from the UK dealing with the case either went astray or was not dealt with by the correct officials at the commerce ministry.
The “evidence simply demonstrates that the ministry was the author of its own misfortune”, says the damning ruling by the England and Wales High Court (Chancery Division).
The highly embarrassing rejection of the appeal filed by the Republic over the halloumi trademark has exposed the bureaucracy, irresponsibility, and seeming incompetence of government services who lost the trademark for failing to object in time to an application filed by a British company at the Intellectual Property Office (IPO) in the UK.
The details of the debacle are contained in the court ruling in which Cyprus lost its appeal last week and obtained by the Cyprus Mail on Wednesday. The commerce ministry said it has ordered an investigation.
Cyprus had applied to register the trademark on December 22, 1990 and it was registered on February 22, 2002 as “Cheese made from sheep’s and/or goat’s milk; cheese made from blends of cow’s milk.”
The current regulations prescribe certain conditions regarding the production of a speciality Cypriot cheese in accordance with particular standards governing composition and method of manufacture.
The trademark was recently renewed by the ministry for a 10-year period ending on December 22, 2027.
Prior to 2011, the ministry used the addresses of its regular UK solicitors, Clifford Chance, and of the trademark attorneys Chancery Trade Marks, as its address for service of documents from the Registrar relating to the trademark.
But crucially this address was changed in 2011 to the ministry’s offices in Nicosia.
On December 22, 2017 a British company, John & Pascalis Ltd, filed three separate applications to invalidate or revoke the trademark.
In a letter dated January 26, 2018, the IPO wrote to the ministry serving the application and explaining that it had two months in which to file a TM8 Form and counterstatement.
The letter stated in bold: “The TM8 and counterstatement must be received on or before March 26, 2018.”
According to the rules, if the paperwork was not filed within the prescribed period “the registration of the mark shall, unless the register otherwise directs, be declared invalid in whole or part.”
The January 26 letter was received by the ministry at the latest on February 9, the court said.
“The Ministry’s evidence is that the letter was read by at least two officials in the Ministry on February 9, 2018 and that, on or shortly after that date, a third official instructed a fourth official to forward the letter to the Law Office of the Republic of Cyprus; but that instruction was not actioned, and so no Form TM8 or counterstatement was filed.”
Where no TM8 is filed in time, it is the practice of the IPO to write to the trademark proprietor giving an additional 14-day period in which to request a hearing or provide written reasons as to why the registrar should exercise the discretion vested in him to treat the application as defended.
A letter was duly written to the ministry on April 5, 2018 referring to the January letter and warning that “the registrar may treat the proprietor as not opposing the application and registration of the mark shall, unless the registrar otherwise directs, be declared invalid.”
“If you disagree with the preliminary view you must provide full written reasons and request a hearing on, or before, April 19, 2018. This must be accompanied by a witness statement setting out the reasons as to why the TM8 and counterstatement are being filed outside of the prescribed period. If no response is received the registry will proceed to issue a short decision on the issue of failure to comply with the Rules governing the filing of a defence.”
The ministry said the April letter was only received on April 26.
“According to that evidence, the April Letter was sent by an official in the ministry to an official in the Department of Registrar of Companies and Official Receiver, who received it on April 30, 2018. On May 7, 2018 the latter official sent the April Letter back. The April Letter was not received by the correct department within the Ministry until May 9, 2018.”
That was a week after the IPO issued its cancellation decision after receiving no response whatsoever.
The government received the cancellation decision on May 9, 2018, immediately contacting its attorneys in the UK about the matter.
It appealed the IPO decision on May 30, but the court rejected the appeal and dismissed all the ministry’s arguments and excuses in a decision issued on November 28.
“If parties choose to give addresses for service outside the UK, then they must accept the consequential delays in receiving such communications,” the court said. “The ministry could have provided the IPO with an email address for correspondence in addition to the postal service address, but it did not.”
It further states that “evidence simply demonstrates that the ministry was the author of its own misfortune. The Ministry’s internal procedures were so disorganised that the letter enclosing the Application was passed from official to official after receipt on February 9, 2018, but no action was taken.”