Statutory guidance

Tribunal practice notice (1/2018)

Published 4 December 2018

Examination of pleadings based on earlier marks

1. The purpose of pleadings is to set out the party’s legal case with sufficient clarity so that the other side can make an informed decision about whether to defend their trade mark, and in which respects. The pleadings filed in trade mark oppositions and invalidation proceedings do not always meet this standard.

2. The registrar has a duty to ensure that the system is fair to both parties and that, so far as is reasonably practical, those without legal representation and/or of limited means, are given equal access to justice.

3. From 1 January 2019, where the pleadings in trade mark opposition/invalidation proceedings under s.5(1) -s.5(3) of the Act are not sufficiently clear, the registrar’s casework examiners may require further information, particularly if:

(i) The number of earlier marks exceeds 6, and/or

(ii) It is not obvious why the goods/services covered by an earlier mark are claimed to be identical or similar to the opposed goods/services.

More than 6 earlier marks

4. There is no rigid limit to the number of marks that can be relied on in opposition/invalidation proceedings. It is recognised that a party may sometimes have to base its case on more than 6 earlier marks, for example where they are registered in different (but relevant) classes, or the party is running a case based on a ‘family’ of (say) 7 earlier marks.

5. For the purposes of establishing the ‘family’ an opponent/applicant for invalidation should rely only on earlier marks that it can show were present on the UK market at the relevant date. Further, it should be borne in mind that while a big family may be a more emphatic illustration of the distinctiveness of the common element, adding many more earlier marks to the “several” required to constitute a ‘family’ entails diminishing returns and may make for inefficient proceedings.

6. Where there is no apparent and justifiable reason for doing so, and the number of earlier marks therefore appears unnecessary and disproportionate, the registrar may direct that the party filing the form TM7/26(I) nominates its ‘best case’ earlier marks for consideration.

Similarity of goods/services not obvious or explained

7. Where it is not self-evident why the goods/services covered by an earlier mark are claimed to be identical, or similar, to the opposed goods/services for the purposes of s.5(1) or (2), and this is not explained in the notice of opposition etc. The casework examiner may require the party filing the form TM7/26(I) to provide further information. Specifically, the caseworker may invoke the registrar’s power under Rule 62 of the Trade Mark Rules 2008 to require the party to explain which goods/services are claimed to be identical/similar, and why. This requirement will always arise when it is not clear why any of the goods/services covered by the earlier mark are claimed to be similar to the goods/services covered by the grounds under s.5(1) or (2).

8. Where the same explanation applies to multiple comparisons of individual goods/services, the required information should be provided by reference to the relevant goods/services, grouped accordingly.

9. Depending on the degree of ambiguity, and as an alternative to taking this action at the pleadings stage, casework examiners may decide to serve the form TM7/26(I) on the other side and simultaneously direct the party bringing the case to provide further information about the claimed identity/similarity between the respective goods/services. In these circumstances, the required information will usually be required by the deadline for filing evidence in support of the opposition/application.

10. Either of the above courses of action will permit the other side to properly address the claimed identity, or similarity, of the goods/services in its own evidence of fact and/or written arguments (submissions) in response. This is fairer to the applicant/proprietor than revealing the reasons why the respective goods/services are claimed to be similar for the first time at a hearing, or in final written submissions in lieu of a hearing, i.e. after the other side’s opportunity to file evidence or written submissions in response has passed.

Failure to follow directions

11. Failure to comply with directions under Rule 62 may have the following consequences:

(i) an increase in costs awarded against the offending party, if it is unsuccessful, or a reduction in costs to that party, if it is successful;

(ii) the registrar selecting the earlier marks which appear to represent the party’s best case and directing under Rule 62 that the evidence and arguments be limited to those marks;

(iii) where the basis of the claimed similarity between the respective goods/services remains non-apparent, and has not been explained, the decision maker is likely to find dissimilarity;

(iv) where there is a serious risk of unfairness to, or oppression of, the other party, directions will be made subject to the condition (per Rule 62(3)) that failure to comply with them will result in the opposition/application being struck out in whole or in part.

Procedural hearings

12. Procedural hearings will be appointed where necessary to resolve procedural disputes. In accordance with usual practice, these take place by teleconference and are subject to 14 days notice.

Enquiries concerning this notice

13. Enquiries should be directed to:

Raoul Colombo
Intellectual Property Office
Room 2G33
Concept House
Cardiff Road
Newport
NP10 8QQ
Tel: 01633 811407