Guidance

Rectifying your own Trade Mark Guidance

Updated 18 November 2019

Rectification

Guidance following the filing of a defence

A form TM26(R) (Application to rectify the register) and defence and counterstatement have been filed.

What happens next?

The proceedings now move on to the evidence rounds. With this guidance you will have received a letter from us setting dates by which the applicant and the registered proprietor may file evidence and/or submissions. Once the evidence rounds are complete, the proceedings will be ready for determination, either from the papers on file or following a hearing, and this will be notified to the parties by way of a decision.

The following diagram shows the remaining steps in these proceedings, which will be explained in more detail below:

During this process any documents you send to the Registry MUST also be sent to the other party in the proceedings (through their legal representatives if they have appointed any). If you fail to copy them to the other party, they will not be considered as having been filed and will not be admitted into the proceedings.

What are the evidence rounds?

Once the pleadings have been filed, the parties are each given an opportunity, in turn, to file evidence and/or submissions in support of their cases. It is important to note that Evidence and Submissions are not the same thing.

In Killer Chorus (BL O/431/12), a decision issued by Mr Geoffrey Hobbs QC, acting as the Appointed Person, the difference was explained. He stated:

The reference in Rule 20(1) to ‘evidence and submissions’ maintains the legally and procedurally important distinction between filing ‘evidence’ i.e. information introduced into the proceedings under the provisions of Rules 62 and/or 64 for the purpose of substantiating the facts and matters to which it relates; and filing ‘submissions’ i.e. representations made by the party putting them forward as to the position and approach which the Registrar should adopt in relation to the matters addressed.

This was further commented on, again by Mr Hobbs, in Telegu NRI Forum (BL O/210/18).

How do I file evidence?

Evidence may be filed in the form of a witness statement, an affidavit or a statutory declaration. A witness statement is normally sufficient and is generally a simpler, cheaper option to prepare. It should be headed up to refer to the proceedings by setting out names of the parties and the application and rectification case number. Here is an example of how to present a witness statement which includes filing evidence about an application or for tribunal proceedings but it is important to note that a witness statement must include a statement of truth signed by the person making the statement. That person should be the person with direct, first-hand knowledge of the facts they are providing and/or who has access to the records or documents from which the facts have been taken. This means that it is rarely appropriate for evidence of fact to be given by your legal representative. Evidence which relies on something that the witness has been told by someone else is hearsay evidence and may be given reduced or no weight.

Anyone who makes a witness statement, affidavit or statutory declaration may be called to be cross-examined on their evidence.

As evidence a witness statement should not be filed to give legal argument or opinion.

The witness statement may be accompanied by exhibits.

What are exhibits?

If you have documentation which supports the facts you have given in your evidence, you may file them as exhibits to your witness statement.

Such documents should be included as separate exhibits which should accompany, and which should be referred to in, the witness statement. Normal practice is to use the initials of the person making the witness statement. For example, three exhibits referred to in a witness statement made by John Butler would be numbered JB1, JB2 and JB3.

Witness statements and exhibits should be clear and easy to read and the pages should be numbered. There is a limit to the number of pages of evidence that may be filed. Further information can be found in the Tribunal Practice Notice 1/2015

When do I file written submissions?

Submissions are a method of presenting your legal argument and opinion rather than facts. Submissions filed during the evidence rounds may be used to explain the purpose of any evidence you have filed. They may also set out your views on the other party’s case and/or set out specific challenges to (parts of) their evidence.

Submissions which set out why the law and facts mean that a party should succeed or fail on the particular grounds raised in the pleadings are ones that should be provided as final written submissions which you may file as an alternative to attending a hearing. If you attend a hearing, your final submissions can be made orally at that hearing.

What happens when the evidence rounds are completed?

Once the evidence rounds have been completed, the proceedings move forward for a decision. There are two routes to a decision. The parties will be invited to either:

• ask to be heard (in which case an oral hearing will be arranged even if only one party seeks a hearing)
• make final written submissions in lieu of a hearing (in which case the decision will be made from the papers already on file).

If either party asks and is given permission to cross-examine any witness who has given evidence, the case will proceed to an oral hearing.

The decision

Following either an oral hearing or a decision from the papers, the Hearing Officer will issue a decision which will include the reasons for reaching that decision. The parties will be sent a copy of the decision and it will be published on our website. The decision will be open to appeal.

Appeals

Either party may appeal the decision. Further details on how to appeal and the date by which an appeal should be made, will be sent to you with the decision.