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Jane Lambert
On Monday I discussed the different types of hearings that can take place in the Intellectual Property Office when there is an objection to an application to register a trade mark (see If the examiner says "no" - ex parte hearings in the Trade Marks Registry 10 Aug 2015 London IP and Tech Law). If the examiner (the official who considers an application) objects to it the applicant can discuss it with a senior official known as a hearing officer. This is called an ex parte proceeding because only the applicant is involved. If a third party objects to an application a hearing officer will adjudicate the dispute between the person who opposes the application ("the opponent") and the applicant. Those proceedings are called inter partes because they are between different parties.
How Opposition Proceedings arise
Those who might object to an application usually first learn of it when it is published in the Trade Marks Journal. Many trade mark proprietors instruct their attorneys to arrange for someone to monitor the Journal for applications for marks that are similar to their own registrations. Such monitoring is known as a "watch service". An objector may make written observations to the examiner as to whether a trade mark should be registered under s.38 (3) of the Trade Marks Act 1994 without becoming a party to inter partes proceedings with all the risk and expense that entails. Before The Trade Marks (Relative Grounds) Order 2007 came into force, the examiner could take account of earlier registrations or other rights when deciding whether to grant an application. Now he or she can only bring the observations to the applicant's attention. If the applicant insists on proceeding the objector must oppose the application or stand aside.
Grounds of Objection
There are two sets of grounds upon which an opponent can object to a trade mark application:
- absolute grounds such as those that I discussed in Monday's article; and
- relative grounds: that is to say, the opponent has registered, or applied to register, a the same or similar trade mark for the same or similar goods or services in the UK, EU or a group of countries that includes the UK or EU under the Madrid Protocol or the opponent can prevent the use of the applicant's mark by bringing an action for passing off or infringement of copyright, registered design or some other intellectual property right.
Relative grounds of refusal are set out in s.5 of the Trade Marks Act 1993.
Although proceedings in the IPO are generally less expensive than proceedings in the courts the Registrar expects parties to try to settle their differences amicably. Before taking proceedings, the opponent should explain his or her objection to the applicant in a letter before claim enclosing any relevant documentation relied upon and invite the applicant to withdraw his or her trade mark application or restrict the goods or services for which registration is sought. If the applicant does not want to do that he or she should explain why with reasons and evidence in a timely letter of response. Once their differences have been identified, the parties or their professional representatives may try to resolve them through direct negotiation or mediation. Both the IPO and the WIPO offer specialist mediation services as do our chambers (see IP Mediation 22 May 2015 4-5 IP). Such negotiations or mediation have to proceed with alacrity as there is usually a 2 month time limit from publication in the Journal for an opposition to be lodged though that can be extended to 3 months if the opponent files a Notice of threatened opposition in Form TM7A.
Starting Proceedings
If the parties cannot resolve their differences amicably the opponent commences proceedings by lodgung a Notice of opposition and statement of grounds in Form TM7 and paying the appropriate fee. The statement of grounds are the equivalent of particulars of claim in civil proceedings. At one time a statement of grounds resembled particulars of claim and had to be settled by the opponent's counsel or attorneys. Nowadays they are reduced to a questionnaire. The amount of the fee will depend on the ground upon which the opponent opposes the application. If it is on the ground that he or she has registered the same or similar mark for the same or similar goods under s.5 (1) of (2) the fee is only £100. If he or she opposes the application on some other ground the cost of the opposition increases to £200. If the Notice of opposition and statement of grounds are in order the IPO sends them to the applicant in accordance with rule 17 (8) of the Trade Marks Rules 2008.
Responding to the Application
The applicant usually has up to 2 months to respond to the opposition. If he or she wishes to do so, the applicant must file a Notice of defence and counterstatement in Form TM8. This is like a defence in civil proceedings. Its purpose is to identify the issues that are in dispute. Like the Notice of opposition and statement of grounds the Notice of defence and counterstatement is reduced to a questionnaire. No fee is charged for filing Form TM8.
Preliminary Indication
Once Form TM7 or TM8 have been filed the case will be referred to a hearing officer. If the opposition is based on an earlier registration or application to register under s.5 (1) or (2) of the Act the hearing officer may give a preliminary indication as to whether the application should proceed or be refused under s. 5 (1) or (2). The opponent or, as the case may be, applicant then has up to one month to decide whether to persevere with the opposition or application. If that party decides to do so, he or she must file a Form TM53 and serve it on the other party or parties. If he or she fails to do that in time, the opposition or, as the case may be, application will be deemed to have been withdrawn.
Evidence
If no preliminary indication is given or if a party files a Form TM53 the hearing officer will direct the parties to file the evidence upon which they rely. Usually that takes the form of written statements from each of the witnesses that a party wishes to call but it may also be in the form of a statutory declaration or affidavit. Witness statements set out the witness's testimony in numbered paragraphs and is verified by a statement of truth. If the other side wishes to cross examine that witness he or she verifies it with or without modification on affirmation or oath. The witness statement then stands as that witness's evidence in chief. If the witness wishes to refer to a document it is usual to exhibit a copy of the document to the witness statement.
Further Negotiations or Mediation
Negotiations to settle the opposition often resume or begin once the statements of case have been exchanged and the evidence has been filed and served. There is less time pressure at this stage and the parties can request extra time for negotiations or mediation.
Electing a Hearing
If the parties are unable to resolve their dispute either side may request a hearing or indicate that he or she is content for the hearing officer to decide the issues on the documents only. The incentive to dispense with a hearing is that the costs that the unsuccessful party will be ordered to pay under Tribunal Practice Notice 2/2000 are very much less than the costs that would be awarded after a full hearing. If neither party asks for a hearing the parties will be allowed to file written arguments in support of their case.
Skeleton Arguments
Shortly before the hearing the parties or their professional representatives are expected to exchange summaries of the arguments that they intend to make and references to the statutes, cases and text book passages upon which they rely and lodge copies of those documents with the hearing officer. Those summaries are known as "skeleton arguments". A party is usually allowed some latitude in amplifying, clarifying or otherwise modifying his or her skeleton once he or she is on his or her feet but he or she will not be allowed to take the other side by surprise.
Conduct of the Hearing
Hearings take place at the IPO's offices in Newport and London. Unless a witness has to be cross-examined the hearing officer may conduct the proceedings by video link or telephone. It is not uncommon for the parties or their representatives to be in London and the hearing officer to sit in Newport. The video transmission link between London and Newport is very high quality and tantamount to being in the same room.
The hearing is opened by the opponent who makes sure that the relevant materials are before the hearing officer and the other side. He or she identifies the issues to be decided, outlines his or her case and how he or she intends to prove it and the legal submissions upon which he or she relies. The opponent then calls his or her witnesses if any. After the witness has identified his or her evidence in chief he or she is cross-examined by the other side. The opponent may re-examine the witness on any point raised in cross-examination that needs to be explained or clarified.
Once the opponent has presented his or her case the applicant calls his or her witnesses or makes his or her submissions in reply. The opponent may cross-examine the applicant's witnesses on their statements and the applicant may re-examine them.
After the applicant has presented his or her submissions the opponent may reply to them.
The hearing officer concludes the hearing by indicating that he will deliver a written decision in due course. It usually follows a couple of months after the hearing.
Costs
The hearing officer has power to order the unsuccessful party to contribute to the successful party's costs. The principles on which he or she makes such an award are set out in TPN 2/2000 (which I mentioned above) and TPN 4/2007. Unless a party has conducted his or her case so unreasonably or behaved so badly that the other side has incurred costs unnecessarily the hearing officer will award costs on a fixed scale. They are never more than a fraction of the actual costs incurred. A few hundred pounds for a decision on the documents and a few thousand if there has been a contested hearing.
Appeal
As in ex parte proceedings the unsuccessful party has a right of appeal either to the Appointed Person or the court. The advantage of appealing to the Appointed Person is that the costs are limited to those awarded by the hearing officer. The disadvantage is that his or her decision cannot be appealed except, perhaps, by judicial review. The costs of an unsuccessful appeal to the Chancery Division in England or Northern Ireland (Court of Session in Scotland) are higher but there is always the chance to appealing to the Court of Appeal or even the Supreme Court. Permission is not required to appeal either to the Appointed Person or court.
Representation
Parties may represent themselves before hearing officers or they may instruct patent or trade mark attorneys, solicitor advocates or counsel. As trade mark law is complex and technical it is often to a party's advantage to instruct an attorney or specialist counsel or advocate. It is now possible and often advantageous for applicants or opponents to instruct a barrister to settle Forms TM7 or TM8, advise on evidence, settle witness statements or represent them before a hearing officer in a procedural or full hearing without also instructing an attorney or solicitor and many choose to do so. It is also possible that your attorney or solicitor may wish to instruct me or some other counsel on such matters. If you want to consult me on any of those matters call me during office hours on 020 7404 5252 or use my contact form.
Further Reading
If you wish to act for yourself you should familiarize yourself with the Trade Marks Act 1994, the Trade Marks Rules 2008 and the Tribunal Practice Notices. I mentioned the IPO's very helpful guidance on Trade mark disputes resolution: hearings on Monday and you can get further guidance in the last chapter of the Trade Marks Manual. Finally, you should never forget that the 1994 Act implements an EU directive which has been interpreted and applied by the Court of Justice of the European Union and General Court and the courts of each of the EU member states. You will be able to access the directive and other legislation and some of that case law through the website of OHIM (Office for Harmonization in the Internal Market), the Community trade marks and designs registry.
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