Trial on Preliminary Indicators
Published 13 November 2023
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This publication is available at https://www.gov.uk/government/publications/trial-on-trade-mark-preliminary-indicators/trial-on-preliminary-indicators
Date of release:
9 February 2021.
Information request:
Information about the IPO’s trial on preliminary indicators (P.I.s) in trade mark oppositions which are taking place in line with Rule 19 of the Trade Marks Rules 2008 and Tribunal Practice Notice 3/2007.
Could you let me know (1) the number of PI’s that have been conducted, by month, (2) how long the trial will last, (3) the process for ending the trial and (4) any supporting documentation for why the PI was introduced and how/when it will end.
I would also like to know the volume of PI’s by UKIPO opposition examiner, if possible.
Preliminary indication: The combined effect of Rule 19 of the Trade Marks Rules 2008 and Tribunal Practice Notice 3/2007 is that the registrar must consider whether it is appropriate to give a preliminary indication as to whether an opposition based upon section 5(1) and/or 5(2) is likely to succeed. In recent years, it has only occasionally been considered appropriate to issue such a preliminary indication. However, the tribunal is currently undertaking a trial of the effectiveness of a more proactive approach to preliminary indications [correct at time of request]. As this case falls within the trial period, you may, should a form TM8 be filed, receive a preliminary indication giving an initial view as to the likely outcome of these proceedings. The preliminary indication is not binding and, should the proceedings continue, a different hearing officer will make the final decision.
Information released:
Q1. The number of P.I.s issued monthly from September to December are shown in the second column below:
| No. of cases passed for PI | No. of PIs issued | PI not appropriate | TM53 filed | TM53 filer represented | |
|---|---|---|---|---|---|
| Sep | 2 | 2 | 0 | 1 | 1 |
| Oct | 18 | 14 | 4 | 8 | 8 |
| Nov | 10 | 6 | 4 | 4 | 4 |
| Dec | 18 | 12 | 6 | - | - |
Q2. The trial is intended to last 6 months, from September 2020.
Qs 3 & 4. Please see the attached paper.
You additionally asked for the volume of P.I.s by opposition examiner. I regret that we cannot disclose the identities of individual opposition examiners because we regard such information as personal data, withheld under s.40(2) of the FOI Act, as is also the identity of the author of the attached paper. We can however say that the cases were equally distributed to those involved in the trial.