1 May 2019Trademarks

UKIPO grants extra time to resolve Marriott-related TM dispute

A British skincare company has been given  more time to resolve a trademark dispute with a hotel brand owned by  Marriott International after procedural errors threatened to see its mark invalidated.

Renaissance Hotels, a Marriott brand, filed an application with the UK Intellectual Property Office (UKIPO) in October 2018 to invalidate  Oskia Skincare’s ‘Renaissance’ mark (number 3295582) in classes 3 and 44 for cosmetics and beauty salon services.

Oskia was required to file form TM8 to the UKIPO indicating its intention to oppose the invalidation application by December 18, 2018.

On this deadline, Oskia instead filed a form TM9C, indicating that both parties had agreed to a “cooling-off” period in which they would attempt to resolve the dispute.

According to UK’s Trade Mark Rules 2008, however, the cooling-off period exists only in opposition proceedings, rather than invalidation actions.

The UKIPO informed Oskia of this at the end of December and said that it was “minded” to treat the skincare brand as not opposing the invalidation application due to its failure to file a form TM8 in the allotted period.

The office gave Oskia until January 10 earlier this year to submit a letter outlining its position and explain the failure to file the required materials on time.

The UKIPO has now accepted Oskia’s submission that despite the procedural errors, it clearly established intent to oppose the invalidation action.

Although the office said Oskia’s justification for late filing was “at the limits of what may be sufficient”, it had found compelling reasons to believe that the company intended to oppose the invalidation of its mark.

The UKIPO has stayed the proceedings until May 31, 2019 while the parties attempt to resolve the dispute.

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