According to the Intellectual Property Office's Facts and Figures for 2012 and 2013 the IPO received 41,524 trade mark applications in 2013 and granted 35,256 in that period. Clearly most trade mark applications go through without any problem but there are some that do not either because the examiner (the IPO official who considers trade mark applications) objects to an application or a third party decides to oppose it.
In either case there may be a hearing before an official representing the Head of the IPO (referred to as "the Registrar" rather than "the Comptroller" in trade mark matters) who is known as a "hearing officer". A hearing to consider an examiner's objection is known as an ex parte hearing because only the applicant for the trade mark attends the hearing. A hearing to resolve an opposition is an example of an inter partes hearing because both the trade mark applicant and opponent take part. The rest of this article will be on ex parte hearings.
Why might an examiner say "no"
Any sign may be registered as a trade mark so long as it can be represented graphically and can distinguish goods or services of one undertaking from those of other undertakings. Graphical representation means some form of writing whether in letters, numerals or both. Most signs that can be recognized by the senses can be represented graphically but there is one great exception. Nobody has yet found a way of expressing in writing a smell. In addition there are some signs that are not registrable for various other reasons. For instance, a sign may be devoid of any distinctive character or it may consist of or contain a protected national or international emblem such as the royal coat of arms or Olympic rings. The grounds upon which an examiner may object to an application are sometimes called "absolute grounds of refusal" and these are set out in sections 3 and 4 of the Trade Marks Act 1994.
What happens if the examiner objects
If it appears to the examiner that the requirements for registration are not met, he or she has to inform the applicant and give him or her an opportunity, within such period as the examiner may specify, to make representations or to amend the application. If the applicant is represented by a trade mark attorney or other professional intermediary there is usually an exchange of correspondence which often results in a solution that meets the examiner's concern. If those concerns are not met within the prescribed time, the examiner has to refuse the application under s.37 (4).
If the application is refused the applicant's only recourse is to request a hearing before a hearing officer. Although this is a judicial proceeding and governed by law it takes the form of a referral to a senior official. Often the only persons present are the applicant or his representative and the hearing officer. Such hearings can take place at the IPO's premises in Newport, by video conference or even by telephone. Applicants can also ask for a decision to be made on the basis of written representations. An applicant may represent him or herself or instruct an attorney to appear on his or her behalf. If a difficult point of law is involved the applicant may want to instruct a barrister.
If the applicant fails to persuade the hearing officer he or she may appeal to the High Court or a lawyer appointed by the Lord Chancellor under s.77 (1) of the Trade Marks Act 1994 known as the "Appointed Person". If the applicant appeals to the court the Registrar is entitled to appear by counsel in which case the applicant risks paying the Registrar's costs if the appeal is unsuccessful.
The IPO has published some very helpful guidance in Trade mark disputes resolution: hearings 20 May 2014.
Should anyone wish to discuss this article or trade mark law in general, he or she should call me during office hours on 020 7404 5252 or send complete my contact form.