Statutory guidance

Tribunal practice notice (1/2015): Restriction on filing evidence in opposition and cancellation proceedings

Published 3 March 2015

1. What?

This notice introduces restrictions on the volume of evidence that may be filed in trade mark proceedings before the IPO, without seeking permission from the registrar’s hearing officer.

2. Why?

Parties are filing large volumes of irrelevant or unnecessary evidence in a significant number of proceedings. This is adding unnecessary cost to proceedings for the parties and taking a disproportionate share of the tribunal’s resources. In a recent analysis of 27 trade mark opposition and cancellation proceedings, 5 cases had over 900 pages of evidence (4 of these had over 1000 pages). Much of this evidence was irrelevant or unnecessary. The remaining 22 cases had 611 pages of evidence or fewer.

3. Required behaviour

Parties should carefully consider what and how much evidence they need to file in order to establish the facts to support their cases. Some examples:

• it is not appropriate to file submissions in the form of evidence
• it is rarely necessary to file copies of hundreds of internet pages and never appropriate to file such evidence without an analysis or explanation as to what they show
• it is not appropriate to file evidence from after the relevant date, at least without an explanation as to how it sheds light on the factual position at the relevant date
• filing the whole of a bulky promotional brochure is rarely justified if only one or a few pages are relevant and the front and back covers together with the relevant page(s) would do. If the whole document is filed there should be an explanation as to exactly which pages are relevant and why
• similarly, it is not necessary to file a company’s entire annual report when only the front cover and a few relevant pages would do
• it is not appropriate to file the results of searches of trade mark registers showing that other marks, including an element common to the marks at issue, are registered in the names of third parties, without evidence that those marks were in use in the UK at the relevant date
• it is not appropriate to file search engine auto prompt evidence (i.e. terms suggested by the search engine in response to initial inputs from the user) as evidence of a likelihood of confusion on the part of human beings

4. The trigger points

The registrar will not routinely challenge the relevancy of evidence at the time it is filed provided that the volume of evidence falls within the following limits:

• evidence in chief: 300 pages
• evidence in response: 300 pages
• evidence in reply: 150 pages

These limits refer to evidence only. They do not cover written submissions filed with, but separate from, evidence of fact.

Where a party intending to file evidence, and planning to exercise appropriate restraint on the volume of their evidence, considers it likely that it will still exceed the limits set out above, it may seek directions.

5. Case Management Conference (CMC)

Where such directions are sought a CMC will be appointed.

If the registrar finds that a party has breached the above limits without seeking directions, a hearing officer will review the evidence and exercise the registrar’s powers under Rule 62(2) in order to determine whether the (proposed) evidence goes to issues on which evidence is required. If it does or may do, but the manner in which the evidence has been filed is unhelpful, the hearing officer may give directions as to the form in which that evidence should be placed before the registrar. If the evidence covers irrelevant matters on which evidence is not required, the hearing officer will decide whether to direct that it should be excluded. If the amount of irrelevant material is small, particularly in comparison to the amount of relevant material, the hearing officer may decide that an intervention would be disproportionate to the benefit. However, if the hearing officer considers that such a direction should be issued, he or she will inform the parties. Unless the parties are content for the hearing officer to make a decision from the papers, a CMC will be appointed before such directions are issued.

6. Costs

If a party files evidence that does not comply with this practice notice, the registrar may regard it as unreasonable behaviour. Such behaviour may be penalised by awarding the other side the full cost of dealing with the admission or rejection of that evidence (in addition to any scale costs due for other aspects of the proceedings).

7. When?

This notice will come into effect with respect of any evidence due to be filed on or after 30 April 2015.

8. Related practice

This notice does not affect previous Practice Notices limiting the number of pages that may be exhibited to a TM7F in Fast Track oppositions to 100 pages, requiring all evidence to be paginated (if more than 4 pages) and for directions to be sought before any survey or expert evidence is filed in trade mark proceedings.

9. Review

This practice notice will be reviewed in October 2015 so as to ensure that it is having the intended positive effect on the cost and timeliness of proceedings.

Allan James
Head of the Trade Mark Tribunal