In a recent UKIPO opposition decision involving a trade mark application by the manufacturers of the SKE CRYSTAL BAR vape, the UKIPO has delivered a stark reminder of the unforgiving nature of statutory deadlines and notifying an Applicant of an intention to oppose.
As mentioned in last week's post, we have prepared a full case summary which we are pleased to publish.
Background:
Shenzhen SKE Technology Co., Ltd. ("the Applicant") is a Chinese manufacturer of vaping products, including the "Crystal Bar" range, distributed in approximately fifty countries worldwide.
The Applicant introduced the "Crystal Bar" vape at the World Vape Show in London in December 2021, but by May 2022, its UK presence was limited to a single distributor order and a Medicines and Healthcare Products Regulatory Agency approval from 9 May 2022. There were no UK sales to end users and minimal marketing before this date.
On 10 May 2022, a director of Bargain Busting Limited ("the Opponent"), a small UK wholesaler, applied to register "CRYSTAL BAR" as a UK trade mark for vaping goods. The Opponent, incorporated in 2013, does not manufacture vaping products but operates in the non-specialised wholesale sector.
The Applicant opposed the application, claiming prior goodwill and passing off rights. Both the UKIPO and the High Court found the Applicant's evidence insufficient. The courts held their use was too insignificant to establish protectable goodwill in the UK as of 10 May 2022.
The opposition failed and the mark was registered to the Opponent. Following the UKIPO victory, the Opponent sent cease and desist letters to the Applicant's UK distributors and began High Court trade mark infringement proceedings. The Applicant then obtained an interim injunction restraining the Opponent from making further unjustified threats.
Since the May 2022 trade mark application, the Applicant has filed multiple UK trade mark applications for marks incorporating the term 'Crystal', most of which have been opposed by the Opponent.
This case, while part of a wider dispute between the parties, raises issues distinct from the main conflict between the Applicant and the Opponent, specifically with regards to following UKIPOs procedural Rules during opposition proceedings. The broader dispute between the parties and the recent high court decision is discussed in a blog post by our colleague Oliver Fairhurst here.
The trade mark opposition against "CRYSTAL 6IN1"
On 26 July 2024, the Applicant filed UK trade mark application for the mark "CRYSTAL 6IN1" in Class 34, covering a range of tobacco, e-cigarette and vape-related goods.
On 12 December 2024, the Opponent filed a notice of opposition against the application, relying on sections 5(2)(b) (likelihood of confusion) and 3(6) (bad faith) of the Trade Marks Act 1994. The opposition was directed at all goods in the application.
The opposition was filed without prior notice to the Applicant, which is standard practice in opposition proceedings with the UKIPO.
The opposition was based on three prior trade marks. Two were subject to pending non-use cancellation proceedings, while the third, which had been filed on 10 May 2022, was not vulnerable to cancellation for non-use.
- UK00003235344 – CRYSTAL CLEAR VAPOURS ELECTRONICS CIGARETTES (Class 34), registered 18 August 2017
- UK00003330869 – Blue Crystal (Class 34), registered 1 February 2017
- UK00003786148 – CRYSTAL BAR (Class 34), filed 10 May 2022. This mark, though unregistered at the time of the Registrar's decision, is now registered following the High Court's refusal of the appeal on 1 July 2025.
On 2 January 2025, the UKIPO served the notice of opposition on the Applicant, informing them of the opposition and setting a deadline of 3 March 2025 to file a defence and counterstatement, or to request a "cooling off period".
In its official communications the UKIPO noted that - "It is important to understand that if the deadline date is missed, then in almost all circumstances, the application will be treated as abandoned".
No defence and counterstatement were filed by the 3 March deadline.
One day late, on 4 March 2025, at 7:35 pm the Applicant filed a defence and counterstatement and a request for retrospective extension, explaining the delay was due to an administrative error by their legal representative.
The Registry wrote to the Applicant, explaining that the deadline for the defence and counterstatement is statutory, is not retrospectively extendable, and that the application would be treated as abandoned unless the Registrar directed otherwise. The Applicant was invited to provide full written reasons and a witness statement by 2 April 2025 if they disagreed.
On 2 April 2025, the Applicant requested a hearing and submitted a witness statement explaining that the 3 March 2025 deadline was missed due to a human error managing the firm's docketing system.
On 11 April 2025, the Registry issued a preliminary view to accept the late defence and counterstatement, inviting challenges by 25 April 2025.
On 25 April 2025, the Opponent requested a hearing and submitted written objections.
On 6 June 2025, a hearing was held by telephone conference before the Registrar, with both parties represented and having filed skeleton arguments.
Broadly speaking, the Opponent submitted that human error, by way of a representative's failure to check a diary correctly, falls far short of an 'extenuating circumstance' to justify exercise of the Registrar's discretion to allow a late filed defence and counterstatement to proceed to examination.
Decision
On 16 June 2025, the Registrar issued a decision, refusing to exercise discretion to admit the late filed defence and counterstatement for the following reasons:
- Under Rule 18(1) of the Trade Marks Rules 1994, an applicant must file its defence and counterstatement within the prescribed period if their application is opposed. If the applicant fails to do so, Rule 18(2) states the application is deemed abandoned for the opposed goods or services, unless the registrar exercises discretion to allow otherwise.
- Rules 77(1), 77(5), and Schedule 1 permit an extension of the defence deadline only where the delay results from an error by the registrar, the Office, or the International Bureau—not the applicant. In this case, the delay was not due to such an error.
While Rule 18(2) of the Trade Marks Rules 2008 provides the Registrar with the discretion to permit a late defence in opposition proceedings. However, this discretion is not exercised lightly and requires the presence of 'extenuating circumstances' or 'compelling reasons'. The Registrar must consider all relevant facts of the case when making a decision, including:
- Circumstances of Missing the Deadline - The reasons for missing the deadline and the extent of the delay are central considerations. Here the Applicant's legal representative missed the deadline due to a human error when checking their electronic calendar. The required defence and counterstatement was filed only one day late.
- Nature of the Opponent's Allegations - The seriousness and scope of the Opponent's claims are assessed. In this instance, the Opponent's allegations were based on statutory grounds under the Trade Marks Act 1994 and were directed at the Applicant's entire range of goods.
- Consequences of Treating the Application as Defended or Undefended -The potential outcomes of allowing or refusing the late defence are weighed. If the Applicant is permitted to defend, the proceedings continue, and the dispute is resolved on its merits. If not, the application is treated as abandoned and the Applicant loses the original filing date.
- Prejudice to the Opponent - Any disadvantage or additional costs suffered by the Opponent as a result of the delay are considered. In this case, the Opponent argued that the delay would lead to extra legal costs and diverted attention from other ongoing disputes.
- Related Proceedings - The presence of other related legal actions between the parties is also relevant. Here, the matter formed part of a larger group of related cases, some 20 or more in total, with the potential for consolidation, which could affect the efficiency and management of the proceedings.
The Registrar found that the Applicant's reason for missing the deadline, a human error by their legal representative, did not amount to exceptional circumstances or compelling reasons, and so did not justify exercising discretion to accept the late defence.
As a result, the application was deemed undefended, the opposition succeeded, and the Applicant lost its filing date. The Registrar noted that this loss of filing date and the potential for further proceedings on similar grounds are typical consequences of failing to comply with the strict deadline for filing a defence.
No order for costs was made because the opposition was filed without prior notice to the Applicant.
Conclusion
The UKIPO's approach underscores the critical importance of robust deadline management systems within IP and law firms. Here, the Applicant, missed the deadline to file its defence and counterstatement by just one day, the result of a docketing error by its legal representative. The outcome was uncompromising: the application was deemed abandoned, and the opposition succeeded without any consideration of the merits.
The consequences for clients can be severe, not just in terms of wasted costs, but also the loss of valuable filing dates and the need to restart the application process from scratch. In this case, the Applicant has acted swiftly, refiling the application on the 27 June 2025.
This decision is a clear warning to practitioners and brand owners alike: administrative oversights, however minor or promptly addressed, will rarely be accepted as exceptional circumstances excusing missing statutory deadlines in UK trade mark proceedings.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
