Guidance

Trade marks tribunal: glossary of terms

Published 26 August 2016

A

Absolute grounds	These are grounds for objecting to a trade mark arising from the trade mark itself.
Acquiescence	Describes a period of 5 years where the owner of an earlier right has known about the use of a registered trade Mark by another but taken no action to prevent that use. This usually results in a loss of certain rights associated with ownership of a registered trade mark.
Address for service	An address within the UK, European Economic Area (EEA) or Channel Islands which must be filed by all parties to proceedings and to which all correspondence relating to proceedings will be sent by the Tribunal.
Appointed person	A senior independent intellectual property lawyer appointed to hear appeals from decisions of the Intellectual Property Office (IPO). The Appointed person offers a cost effective alternative to appealing to the courts.

B

Bad faith	Conduct before the IPO or in relation to a trade mark that indicates behaviour or practices that is questionable. It covers obvious conduct like dishonesty but can be more subtle and cover conduct that might be generally considered sharp practice.
Bona fide	This relates to good faith and implies that in certain dealings with trade marks a party acts without any knowledge or information which is contrary to or undermines their position without fraud, collusion or participation in wrongdoing.

C

Case Management Conference (CMC)	In accordance with rule 62(4) the Tribunal may, at any time, direct that the parties attend a CMC. This will be conducted by a Hearing Officer and will, as a general rule, result in directions being given in respect of the timetable and future conduct of the proceedings.
Cooling-off period	A period allowed in opposition proceedings before the Tribunal, within which parties may negotiate a settlement.
Counter statement	The purpose of the counterstatement is to agree or disagree with any of the grounds set out by the other side in its statement.

E

Earlier right	This is a term used to describe a pre-existing right that may form a barrier to subsequent trade mark application.
Earlier trade mark	This is a term used to describe a pre-existing trade mark which may form a barrier to a subsequent trade mark application. These trademarks may be Domestic, Community trademarks and/or International trade marks.
EEA	EEA, a free-trade zone created in 1994, composed of the states of the European Union together with Iceland, Norway, and Liechtenstein.
European Union Intellectual Property Office (EUIPO) (formally called Office for Harmonisation of the Internal Market (OHIM))	This is the EUIPO and is responsible for the registration of Community trademarks and Community designs.
Evidence	Information provided in a Witness statement to prove the facts of a case.

H

Hearing	An open attendance before a Hearing Officer at the Tribunal, which is normally open to the public.
Hearing Officer	A senior official of the Tribunal responsible for conducting hearings and making decisions on proceedings pending before the IPO.

I

Inter Partes [Between the parties]	Is used to refer to legal proceedings of an adversarial nature between two or more parties, in opposition proceedings between the application for registration and the opponent.
Invalidity/invalid	A decision that a registered trade mark should not have been granted due to grounds that subsisted at the time of the grant of the application. Once declared invalid, such a trade mark will be deemed never to have been registered.

J

Joint hearing

A hearing, on preliminary matters, prior to the parties being in formal proceedings. (Once parties are in formal proceedings this becomes known as a Procedural Hearing).

O

European Union Intellectual Property Office (EUIPO) (formally called Office for Harmonisation of the Internal Market (OHIM))	This is the EUIPO and is responsible for the registration of Community trademarks and Community designs.
Opponent	The party objecting to an applicant’s application for a trade mark.
Opposition	The procedure where a third party may formally object to an application for registration of a trade mark.

N

Notification date

The date on which the Tribunal serves proceedings on the other side.

P

Passing off	A cause of action that seeks to prevent unregistered trademarks with a sufficient goodwill from being misappropriated by a third party.
Pleadings	Is an alternative, technical term for statements and counter-statements. Pleadings serve a simple function by identifying the issues between the parties which may later be the subject of evidence.
Preliminary view	Issued by the Tribunal, to the parties, to indicate its view on a particular matter, for example, refusal of an extension of time or a view that consolidation is appropriate. A period is given for the parties to contest such a decision.
Procedural hearing	IA hearing held in respect of preliminary matters between two or more parties which need to be resolved prior to the substantive hearing.

R

Register	The record kept by the IPO of all registered trademarks and registered transactions.
Register of Trade Mark Attorneys	The official register of professionals entitled to use the designation trade mark attorney, entry to which is subject to passing rigorous examinations in trade mark law and practice and associated intellectual property rights.
Registrar	Another term to describe the Chief Executive of the IPO.
Relative grounds	Grounds for objecting to a trade mark application or applying for a declaration of invalidity due to the existence of earlier trademarks or rights.
Revocation/revoke	An action to remove a registered trade mark for certain reasons that have arisen since the trade mark was registered and include that it has not been used for a period of 5 years since its registration and that it is misleading or become the common name for the goods or services for which it is registered.

S

Skeleton argument	A document prepared by a party (or its legal representative) that sets out the basis of the party’s argument. These should always be copied to all other parties to the proceedings and should be filed no later than 2pm two days prior to the hearing date.
Specification	Another name for the classification of goods or services covered by a trade mark.
Substantive hearing	The main hearing to determine the outcome of proceedings.
Submissions	Written arguments by a party to support its case or comment on the other side’s evidence. Submissions are not facts and if a party wishes to rely on facts they must be presented as evidence.
Surrender	A voluntary step the owner of a registered trade mark may take to either remove his trade mark registration in full or in relation to certain goods or services in the specification. Often occurs when a registered trade mark is threatened with revocation or invalidation.

T

Trade Mark Attorney	A professional intellectual property practitioner specialising in trade mark law and practice who is entered on the Register of Trade Mark Attorneys.
Tribunal	Refers to the Registrar, Hearing Officers and the Tribunal’s other officers.

U

Unregistered trade mark

A trade mark which denotes the goods or services of a particular undertaking but is not registered. Such unregistered trademarks may be used to prevent others from using the same or confusing trademarks under passing off.

W

WIPO	The World Intellectual Property Organisation (WIPO) based in Geneva which administers the Madrid Protocol and Madrid Agreement for the international registration of trade marks.
Witness statement	This is a document used to provide the evidence of a party in relation to proceedings before the IPO. It does not need to be authenticated by a notary public.