Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA744809
`
`Filing date:
`
`05/06/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91214673
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
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`Filer's e-mail
`
`Signature
`
`Date
`
`Plaintiff
`Edge Games, Inc.
`
`TIM LANGDELL
`EDGE GAMES INC
`530 SOUTH LAKE AVENUE, SUITE 171
`PASADENA, CA 91101
`UNITED STATES
`uspto@edgegames.com, tim@edgegames.com
`
`Opposition/Response to Motion
`
`Tim Langdell
`
`uspto@edgegames.com, tim@edgegames.com
`
`/Tim Langdell/
`
`05/06/2016
`
`Attachments
`
`OpposersReponseToApplicantsReply3May16.pdf(1067619 bytes )
`
`

`
`
`
`
`
`
`May 6, 2016
`
`Via ESTTA Filing
`
`Ann Linnehan Vogler, Interlocutory Attorney
`Trademark Trial and Appeal Board
`P.O, Box 1451
`Alexandria, VA 22313-1451
`
`
`
`Re: Corrected Response to Applicant's May 3, 2016 Reply in regard to Motion
`
`
`
`Dear Ms. Vogler,
`
`
`
`I refer to Mr. Phillips letter of May 3, 2016 which was attached to a revised Reply
`that he filed that day. As you can see, he relied upon our further Response at Docket#54
`to make his "corrections" to Applicant's Reply.
`
`
`
`Since Applicant made changes to its paragraph 6, attached is Opposer's
`Corrected Response to Applicant's Reply in which Opposer now responds to the so-
`called "corrections" that Mr. Phillips made.
`
`
`
`I trust the Board will please note that Applicant relied upon our Response at
`Docket#54 to make its corrections, and did not object to our filing our Response. Given
`our Response was relied upon by Applicant, and there being no objection to it, we trust
`the Board will take the attached Corrected Response into account. Not least since
`attached to this Corrected Response is proof that the UKIPO issue referred to in
`Applicant's Reply was essentially over-turned on appeal in the UK. It is thus vital that the
`Board review the entire issue, and not permit Applicant to introduce new evidence that
`Opposer is then given no right to respond to. I thus trust the attached will be given full
`and fair consideration.
`
`
`
`Very truly yours,
`
`
`
`Dr Tim Langdell
`Enc.
`
`EDGE Games, Inc.,
`530 South Lake Avenue, #171, Pasadena, California, 91101
`T: 626 449 4EDGE F: 626 844 4EDGE W: www.edgegames.com E:corp@edgegames.com
`
`
`
`

`
` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial Nos. 85/153,981 & 85/153,958
`Marks: EDGE & EDGE (stylized)
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`
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`EDGE GAMES, INC.,
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`Opposer,
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`v.
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`FUTURE PUBLISHING LIMITED,
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`Applicant.
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`Opposition No. 91214673
`
`
`
`Re Serial No. 85/153,981
`
`
`OPPOSER'S RESPONSE TO APPLICANT'S REPLY TO OPPOSER'S RESPONSE TO
`APPLICANT'S MOTION FOR RELIEF
`FROM FINAL JUDGMENT
`
`Opposer was unaware until today that the Board had construed Applicant's filing at
`
`Docket #50 as a Motion for Relief from Final Judgment. Opposer was also not aware until today
`
`that the Board had also construed what Opposer then filed in reaction at Docket #51 as Opposer's
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`Response to Motion. If Opposer had been aware of the Board's actions then Opposer would have
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`filed a proper, more detailed, Response to Applicant's Motion. Accordingly Opposer begs the
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`Board to use its discretion to consider this filing in order to correct the record and permit
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`Opposer to have a proper, full, response to what it now appreciates the Board construed as a
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`Motion.
`
`Opposer Edge Games, Inc ("EGI") thus responds to Future Publishing Limited's ("FPL")
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`Reply filed today's date. While Opposer appreciates that this may be interpreted by the Board as
`
`a Sur-Reply, Opposer trusts, please, that under these very unusual circumstances where FPL is
`
`
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`1
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`

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`deliberately seeking to mislead the Board, that the Board will permit the following brief
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`correction of the false statements made by Mr. Phillips in his filing of today's date. In FPL's
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`Reply they raise entirely new issues and "evidence" never entered before in this motion, and thus
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`we believe that Opposer has a right of reply. Most pertinently, FPL introduce the entirely new
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`evidence of the UKIPO ruling from 2012, which Opposer should have a right to respond to (and
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`to correct the false impression that FPL is giving to the Board regarding that UKIPO decision).
`
`Indeed, the "evidence" now submitted by FPL relating to a UKIPO decision was later effectively
`
`over-turned on appeal in the UK, which is highly pertinent to the Board's decision.
`
`First, EGI's Power of Attorney is entirely valid and genuine, despite FPL's false
`
`allegations to the contrary. The power of attorney is clearly described in the contract between the
`
`parties as "irrevocable" -- which by definition means that the power of attorney does not cease if
`
`the contract is terminated. Indeed, this is precisely why parties label a power as "irrevocable"
`
`exactly to make clear that even if the contract it is issued in is terminated, the power is not
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`affected. The only way an "irrevocable" power of attorney can be terminated at the same time the
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`contract is terminated is if (a) a court specifically orders the power to be terminated at the same
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`time (and specifically voids the fact the power was granted in perpetuity), or (b) if there is a
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`specific clause in the contract that states that upon termination of the contract any irrevocable
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`right granted by the contract is thereby terminated too.
`
`In this case, as is clear by the fact FPL cannot indicate or prove otherwise, no court has
`
`ever ruled that EGI's irrevocable power of attorney has ever been terminated. Similarly, as FPL
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`must concur, there is no clause in the contract between the parties that states any perpetual or
`
`irrevocable right or power is terminated when the contract is terminated. Without such a clause --
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`
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`2
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`

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`and FPL make no reference to such, since no such exists -- then the power continues in
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`perpetuity until or unless a court rules it terminated or until the job the power was created to do
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`is concluded.
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`As to the false statement made by Mr Phillips at his paragraph 6 (revised May 3, 2016) in
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`his list of so-called facts: "...which termination was affirmed by the High Court in August 2010
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`(Exh A., ¶¶ 14, 22, 23, 32.)" Opposer invites the Board to inspect these two referenced
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`paragraphs in Mr. Phillips' Exhibit A and the Board will note that no where in any of these four
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`referenced paragraphs is there a statement by the "High Court" that the Power of Attorney was
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`terminated. Quite simply because, as Mr Phillips is well aware, the High Court in the UK never
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`did confirm that the Power of Attorney was terminated, because no such ruling was ever made in
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`the High Court. To be clear, nowhere in any of these paragraphs does it state that the High Court
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`ruled that when the contract was terminated that this also meant the irrevocable Power ended,
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`too. That ruling never happened.
`
`UKIPO OPINION ON POWER OF ATTORNEY OVERTURNED ON APPEAL
`
`
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`In Exhibit B hereto are pertinent extracts from the final decision on the appeal against
`
`Mr. Landau's UKIPO decision. As can be seen, the Appeal Judge (the so-called "Appointed
`
`Person" of the UKIPO) did not agree with Mr. Landau that an irrevocable Power of Attorney
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`expires when the contract that invoked it is terminated. The issue is referred to in the Appeal
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`Decision as "the third of three bases (for appeal)" and as can be seen in his conclusion the appeal
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`judge concludes "The third of the three bases is not clear-cut from a legal ... point of view."
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`Unlike Mr. Landau who mistakenly believed the issue to be clear-cut (namely terminating a
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`contract terminates the Power of Attorney granted in it), the appeal judge concluded that the law
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`
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`3
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`

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`does not agree with Mr. Landau and that the UK law is not clear-cut on the issue. the trial judge
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`then goes on to say that having determined the issue is not clear-cut (as Mr. Landau believed it
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`was), he was not going to consider and rule on the issue since he did not believe it was necessary
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`in order for him to rule on the overall appeal. Thus the UKIPO proceedings ended with no
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`specific conclusion on the issue of the Power of Attorney and whether it survived the termination
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`of the contract (noting that the Power was invoked on July 5, 2010 well before the contract was
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`terminated on August 20, 2010). The Board would thus be wrong to place any reliance at all on
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`Mr. Landau's original non-expert opinion on the issue was, given the appeal judge clearly did not
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`agree with Mr. Landau's conclusions.
`
`UK (AND U.S.) LAW ON PERPETUAL AND IRREVOCABLE POWERS/LICENSES
`SURVIVING CONTRACT TERMINATION
`
`
`
`The UK law on whether perpetual or irrevocable licenses or powers survive termination
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`of the contract that gave rise to the license or power is well settled. The landmark decision on
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`this issue was given on March 10, 2010: BMS Computer Solutions Ltd v. AB Agri Ltd [2010]
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`EWHC 464(ch). What this landmark decision decided is in line with simple common sense on
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`the issue: if a license (therefore or a similar right such as a Power of Attorney) is granted by one
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`party to the other as "perpetual" then there are only two possible interpretations: either the
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`license (or right) lasts literally for ever (in perpetuity), or it lasts for a very long time until the
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`parties expressly agree it is voided, or if the termination clause of the underlying contract
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`specifically states that the perpetual license (Power) is to expire when the contract terminates.
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`Judge Sales ruled in that decision:
`
` "It was true that the word "perpetual" had different shades of meaning,
`including "incapable of being brought to an end" and "of indefinite duration,
`but subject to any contractual provisions governing termination". In this case,
`
`
`
`4
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`

`
`the second of those interpretations was correct. This being so, there was
`therefore no incompatibility between the variation agreement and the
`requirement to keep the
`support agreement in place, so that requirement
`continued to have effect. Accordingly, when Agri terminated the support
`agreement, it also terminated the licence.
`
`
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`That is, in the particular case in question the contract between the parties had a
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`termination clause that expressly spoke to the issue of whether upon termination the perpetual
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`right was also terminated. The judgment was clear: if there is no such termination clause that
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`indicates a perpetual right is to end when the contract terminates, then the only other
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`interpretation of the term "perpetual" comes into play, namely that the right (license, power) lasts
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`forever, and is incapable of being brought to an end.
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`UKIPO MATTER DID NOT INVOLVE THE SAME PARTIES OR ISSUES
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`Furthermore, the UKIPO decision from 2012 by Mr Landau, that ruling was made against
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`The Edge Interactive Media Inc in the United Kingdom, and has nothing to do with any action
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`here in the United States between FPL and the entirely different company, Edge Games, Inc.
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`There has been no such ruling (in the UKIPO or anywhere else worldwide) against Edge Games
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`Inc, that in any way suggests that EGI's Power of Attorney is not valid and in full force and
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`effect. With respect, this is so-called evidence from a totally different jurisdiction, involving
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`different parties, has no bearing on this case before the Board and should thus be given no
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`weight, nor taken into account. In any event, the opinion of a UKIPO hearing officer on the
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`subject of UK contract law, when he has no knowledge of such contract law and is certainly not
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`an expert in such contract law, is of no bearing in this matter. It would be a travesty of justice if
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`the Board were to give any weight whatsoever to what a UKIPO hearing officer opined on UK
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`contract law in 2012, when this matter before the Board relates to US/Californian contract law,
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`5
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`in 2016. Mr Landau's document has no place in these proceedings, and with respect we are not
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`relitigating the 2012 UKIPO matter here. Suffice to say, Mr Landau was grossly mis-informed
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`about UK contract law, and in fact in UK law the Power of Attorney did survive termination of
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`the contract quite simply because it was styled by the parties as "perpetual and irrevocable." He
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`is simply wrong in his legal conclusion that Edge needed to have an ongoing interest for the
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`power to stay valid -- nothing in UK contract law suggests that, and certainly nothing in US or
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`California contract law suggests that is true.
`
`FUTURE IS OPPOSER'S LICENSEE FOR THE MARK IN QUESTION AND ONLY THE
`LICENSOR (EDGE) CAN OWN REGISTRATION OF THE MARK
`
`This issue has been raised elsewhere in these proceedings, but bears repeating. For the
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`mark in question (EDGE) and the specific goods and services in question, all of FPL's use of the
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`mark in U.S. commerce is under license from Opposer, with all right, title, interest and all
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`goodwill arising from FPL's use of the mark vesting in Opposer (and none vesting in FPL). This
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`is an indisputable fact arising from the "perpetual and irrevocable" trademark license granted to
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`FPL by Edge in 2004 as stated in paragraph 2.1.2 of that agreement:
`
`"2.1.2. [Edge] grants Future on Completion a non-exclusive, royalty free,
`world-wide perpetual and irrevocable license to use and sub-license the
`use of the mark and brand EDGE and those rights assigned to [Edge]
`pursuant to clause 2.6 (if any) in relation to:
`(a) electronic publication versions of its Edge Magazine
`(b) covermounts and other promotional items which are used to
`
`promote the Edge Magazine (including, without limitation, posters)
`or included with or on or inserted in the Edge Magazine or its
`packaging, but which are not sold commercially as separate items;
`(c)
`the packaging of the Edge Magazine and the packaging of any
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`covermounts and any other promotional items referred to in
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`clause 2.1.2(b); and
`(d) magazine branded merchandise, which are provided free of
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`charge as part of the promotion of Edge Magazine.
`And of course, as previously submitted in these proceedings and related proceedings, the
`
`
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`6
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`

`
`perpetual and irrevocable license granted originally by The Edge Interactive Media Inc to FPL
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`was assigned to Edge Games, Inc. And at the same time the right of Power of Attorney (along
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`with any irrevocable Power of Attorney already invoked) was also assigned to Edge Games, Inc.
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`Given the 2010 UK High Court ruling on the issue of whether perpetual licenses survive
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`termination of the contract they were granted in, it is indisputable that to this day FPL remains
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`the licensee of Opposer for the mark EDGE and for the goods and services in question in the
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`'981 mark. According to standard trademark law, only the licensor in a licensor/licensee
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`relationship has the right to own registration of the mark in question since of course all right,
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`title, interest and goodwill vests in the licensor (not the licensee). Thus here FPL has no right to
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`own registration of the '981 mark, and only Opposer has that right to ownership. Due to the BMS
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`Computer Solutions ruling there can be no doubt that FPL remains Opposer's licensee for the
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`'981 mark.
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`The contract between the parties (in its clause 2.8) stated clearly that if FPL were to apply
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`to register the mark EDGE in its own name, then automatically Opposer was immediately
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`granted an irrevocable power of attorney to take whatever action necessary, and to sign any
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`document necessary on behalf of FPL, in order to transfer ownership of any such trademark
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`application or registration to Opposer, away from FPL:
`
`"2.8 ... To guarantee compliance by Future with their obligations
`under this Clause 2.8 [to not apply to register the mark EDGE in its
`own name], Future irrevocably appoints [Edge, with further power to
`delegate its powers to any director or other duly authorized officer of
`[Edge], to be their true and lawful attorney and to do and perform any
`acts and to execute any documents necessary or desirable in
`connection with this Clause 2.8 and Future hereby undertakes to ratify
`whatever [Edge] shall do or cause to be done under this power of
`attorney."
`
`
`
`7
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`

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` Two points the Board should note: (a) the power of attorney automatically came into
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`effect the moment FPL breached clause 2.8 by applying to register the mark EDGE in its own
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`name rather than in Opposer's name; (b) Future signed its agreement here to be compelled to
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`ratify any action that Opposer takes using the Power of Attorney. That is, FPL waived all right to
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`dispute that the Power of Attorney exists or to dispute any action that Opposer takes using the
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`Power of Attorney.
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`This means Applicant waived all right to ever state to the Board either that the Power
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`does not exist or that what Opposer did with the Power is not approved of or acceptable to FPL.
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`Thus the entire argument presented by Applicant in its Motion must be rejected by the Board
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`based on the conditions agreed to by FPL (which conditions are irrevocable and hence still in full
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`force and effect).
`
`The '981 mark was applied for in the U.S. based on the fact of the UK application for the
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`same mark and the same goods dated July 5, 2010. The parties agree that the contract between
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`them was not terminated until August 20, 2010, and thus the underlying UK application which
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`forms the basis of the '981 application was filed at the time both parties accept the contract was
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`still in full force and effect. Which in turn means that on July 5, 2010 the Power of Attorney was
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`undeniably automatically invoked and remains in place until all issues arising in relation to the
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`UK July 5, 2010 application have been resolved to Opposer's satisfaction. This '981 application
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`was directly based on the July 2010 UK application and hence Opposer has the right to assign
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`this mark, too, and the Power of Attorney undeniably continues until the USPTO gives its final
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`decision that the '981 mark is formally assigned to Opposer, with registration maturing in
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`Opposer's name.
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`
`
`8
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`

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`The fact of the Power of Attorney is not only supported by the BMS Computing decision
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`in that the Power being termed irrevocable is also implied to be perpetual, but is also supported
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`by the 1971 UK Powers Act (see paragraph 34 of FPL's Exhibit). This UK Act clearly states that
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`a Power of Attorney remains in place until all issues that the power was granted to deal with
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`have been concluded -- i.e. until the '981 mark is fully assigned to Opposer. This is, after all,
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`what the term "irrevocable" means, and is the same meaning in U.S. law, too. Mr Landau was in
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`error when he tried to suggest that the Power expired because Opposer lost its "interest" when
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`the contract was terminated -- this was obviously not true, since critically and centrally Opposer
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`continued to have substantial interest arising from the ongoing perpetual and irrevocable
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`trademark license to FPL. To this day Opposer continues to have interest, and pertient interest
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`since nothing could be more pertinent than that FPL is still Opposer's licensee for the mark in
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`question and the goods in question in the '981 mark.
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`CONCLUDING REMARKS
`
`In closing, EGI is not "playing a trick" nor did it "play a trick" in the UK either (EGI took
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`no action in the UK, and FPL gives no proof that EGI took any such action in the UK -- not that
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`issues in the UK have any place being raised here given the lack of jurisdiction or relevance).
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`The simple fact is that the Power of Attorney is still in effect to this day (FPL cannot deny that it
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`is "irrevocable"), and thus Mr. Gonzalez did lawfully represent FPL when the assignment was
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`executed. The assignment is thus entirely valid and genuine. While the UKIPO matter referenced
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`by FPL is not relevant since it involved different parties, different issues and was in a different
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`jurisdiction under different trademark law, it becomes moot anyway since Mr. Landau's mistaken
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`conclusion regarding the irrevocability/revocability of the Power of Attorney was overturned on
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`
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`9
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`Appeal in the UK anyway.
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`The bottom line is that EGI is the current valid owner of this trademark application (see
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`the current, valid, record of assignment attached as Exhibit A), and consequently FPL has no
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`standing to ask that the mark be expressly abandoned. EGI is the lawful owner of record of the
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`trademark Serial No. 85/153,981, and FPL has no standing or right to ask that it be abandoned,
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`nor does Opposer/EGI give its permission for the mark to be abandoned. On the contrary,
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`EGI/Opposer once again asks that the Board reaffirm the termination of these Opposition
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`proceedings and permit the '981 application in question to mature to the Register, registered in
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`the name of EGI, its true and legal owner.
`
`Last but not least, if FPL sincerely believed that the assignment recorded at REEL
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`005638, FRAME 0962 was not genuine, then presumably FPL would have filed a counter-
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`assignment to assign the mark back to FPL. But it is a matter of record that despite the passage of
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`time the '981 mark is still formally and legally assigned to EGI, and FPL has taken no steps
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`whatsoever to either reassign the mark back to FPL or to file any kind for formal challenge (say,
`
`with the District Court or the USPTO) to the validity of the assignment. FPL must appreciate that
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`it cannot merely allege to the Board that the assignment was invalid yet take no action
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`whatsoever to reverse the assignment or formally challenge it in a correct forum for such a
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`challenge.
`
`
`Dated: May 2, 2016
`(amended May 3, 2016)
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`By: /Tim Langdell/_____________
`
`CEO, Edge Games, Inc.
`Opposer in Pro Se
`530 S. Lake Avenue 171
`Pasadena CA 91101
`Tel: 626 449 4334
`Fax: 626 844 4334
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`10
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing OPPOSER'S RESPONSE TO
`APPLICANT'S REPLY TO OPPOSER'S RESPONSE TO APPLICANT'S MOTION FOR
`RELIEF FROM FINAL JUDGMENT has been served by mailing said copy on May 3, 2016, via
`First Class Mail, postage prepaid, upon the following party of record.
`
`
`Robert N Phillips
`Reed Smith LLP
`101 Second Street
`San Francisco, CA 94105
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`Signature: /Tim Langdell/______
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`Date: May 3, 2016
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`
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`11
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`

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`EXHIBIT A
`
`EXHIBIT A
`
`
`
`12
`
`

`
`United States Patent and Trademark Office
`Home|Site Index|Search|Guides|Contacts|eBusiness|eBiz alerts|News|Help
`
`Assignments on the Web > Trademark Query
`Trademark Assignment Abstract of Title
`
`Total Assignments: 1
`Filing Dt: 10/15/2010
`Serial #: 85153981
`Applicant: Future Publishing Limited
`Mark: EDGE
`Assignment: 1
`  Recorded: 10/06/2015
`Reel/Frame: 5638/0961
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`Assignor: FUTURE PUBLISHING LTD
`
`Assignee: EDGE GAMES INC
`530 SOUTH LAKE AVENUE
`171
`PASADENA, CALIFORNIA 91101
`Correspondent: DR. TIM LANGDELL
`530 SOUTH LAKE AVENUE
`171
`PASADENA, CA 91101
`
`Reg #: NONE
`
`Reg. Dt:
`
`Pages: 3
`
`Exec Dt: 09/17/2015
`Entity Type: CORPORATION
`Citizenship: GREAT BRITAIN
`Entity Type: CORPORATION
`Citizenship: CALIFORNIA
`
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`

`
`EXHIBIT B
`
`EXHIBIT B
`
`
`
`13
`
`

`
`
`
` 1 UK INTELLECTUAL PROPERTY OFFICE
` The Rolls Building,
` 2 7 Rolls Buildings,
` Fetter Lane,
` 3 London, EC4A 1NL.
`
` 4 Wednesday, 28th May, 2014
`
` 5 Before:
`
`
`
`
`
`
`
` 6 MR. GEOFFREY HOBBS Q.C.
` (sitting as the Appointed Person)
` 7
` - - - - - -
` 8
` In the Matter of the Trade Marks Act 1994
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` -and-
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` In the Matter of a Request by EDGE INTERACTIVE MEDIA INC
` 11 ("EIM") for Recordal of Partial Assignment of UK Trade Mark
` Application Nos. 2552136 and 2552147 in the name of
` 12 FUTURE PUBLISHING LIMITED ("FUTURE")
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` 14 (Appeal from Decision No. O/283/12 of Mr. David Landau, acting
` on behalf of the Registrar, dated 25th July 2012)
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` (Transcript of the Shorthand Notes of Marten Walsh Cherer
` 17 Ltd., 1st Floor, Quality House, 6-9 Quality Court,
` Chancery Lane, London, WC2A 1HP.
` 18 Tel No: 020-7067 2900. Fax No: 020-7831 6864.
` email: info@martenwalshcherer.com. www.martenwalshcherer.com)
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` MR. ROBERT DEACON (instructed by Edge Interactive
` 21 Media Inc.) appeared for the Appellant.
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` 22 MR. J.G. PEARSON (Abel & Imray) appeared for the Respondent.
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` 23 - - - - - -
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` 24 D E C I S I O N
` (As approved by the Appointed Person)
` 25
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`

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` 1 Edge Interactive was relying solely upon clause 2.8 of the
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` 2 2004 Agreement as being sufficient in and of itself to effect
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` 3 the necessary assignment in writing in accordance with the
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` 4 requirements of those sections of the Act.
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` 5 Subsequently, on 27 July 2012, Edge Interactive wrote to
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` 6 the Registry enclosing a Deed of Assignment bearing the date
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` 7 30 July 2010 which Dr. Langdell had signed both on behalf of
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` 8 Future Publishing as assignor and on behalf of Edge Interactive
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` 9 as assignee. On 17 July 2012, Dr. Langdell filed a skeleton
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` 10 argument for use in the Registry proceedings. He
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` 11 attached an affidavit made on 16 July 2012 in which he
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` 12 claimed to have executed the Deed of Assignment on 30 July
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` 13 2010 in the exercise of the rights conferred upon Edge
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` 14 Interactive by clause 2.8 of the 2004 Agreement. Although he
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` 15 referred in his affidavit to the assignment of 30 July 2010
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` 16 as being 'exhibited hereto', what he actually exhibited was a
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` 17 further Deed of Assignment dated 17 July 2012.
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` 18 The application for recordal was refused for the reasons
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` 19 given by Mr. David Landau, on behalf of the Registrar of Trade
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` 20 Marks, in a written decision issued under reference
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` 21 BL O/283/12 on 25 July 2012. In summary, the hearing
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` 22 officer found, firstly, that clause 2.8 of the 2004 Agreement
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` 23 was not sufficient in and of itself to effect an assignment of
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` 24 the rights that Edge Interactive claimed to have acquired in
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` 25 accordance with the requirements of the Act; secondly, that
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` 1 Dr. Langdell's evidence and assertions with regard to the
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` 2 execution of a Deed of Assignment on 30 July 2010, or indeed
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` 3 at any time prior to 20 August 2010, were false; and, thirdly,
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` 4 that it ceased to be possible for Edge Interactive to invoke
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` 5 the provisions of clause 2.8 of the 2004 Agreement once it had
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` 6 ended, as declared by the order of Proudman J, on 20 August
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` 7 2010.
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` 8 Edge Interactive appealed to an Appointed Person under
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` 9 section 76 of the Trade Marks Act 1994 contending that the
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` 10 hearing officer's decision was wrong in all three
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` 11 of the respects I have identified. Future Publishing
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` 12 filed a respondent's notice contending that the hearing
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` 13 officer's decision should additionally, or alternatively, be
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` 14 upheld on the basis that the 2004 Agreement terminated on 2
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` 15 July 2010 in accordance with the notification of acceptance of
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` 16 repudiatory breach which Future Publishing sent to Edge
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` 17 Interactive on that date.
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` 18 I can deal briefly with the point raised in the
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` 19 respondent's notice. It is not open to Future Publishing or
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` 20 Edge Interactive to contend that the 2004 Agreement terminated
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` 21 on any date other than 20 August 2010. 20 August 2010 is,
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` 22 for present purposes, conclusively determined by the final
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` 23 order of Proudman J to have been the date of termination.
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` 24 During the pendency of the appeal, there has been much
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` 25 to-ing and fro-ing as to what was and was not being contended
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` 1 resulting registrations) susceptible of notification to the
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` 2 Registrar existed on 5 July 2010. Moreover, the notification
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` 3 to the Registrar effected by means of the Form TM16 filed on 7
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` 4 March 2012 was notification of a trust arrangement in place on
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` 5 5 July 2010 and therefore notice of something by which the
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` 6 Registrar ‘shall not be affected’ in accordance with section
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` 7 26(1) of the 1994 Act. For these reasons, I consider that the
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` 8 hearing officer was right to refuse the Form TM16 on the first
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` 9 of the bases he identified in his decision. The third of the
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` 10 three bases he identified is not clear-cut from a legal and
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` 11 factual point of view. It is not necessary for me to consider
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` 12 it on this appeal and I think it is better, in the circumstances
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` 13 of the present case, for me not to do so. In the result, the
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` 14 appeal is dismissed.
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