Designs disputes resolution: hearings
Designs hearings and how to appeal against an outcome.
A hearing is an opportunity for those involved in a dispute to explain their case in person before a senior member of our staff known as a hearing officer. This is where the hearing officer is carrying out the function of a tribunal and the hearing is a quasi-judicial activity.
Types of designs hearings
Ex parte hearing
The examiner dealing with a registered design application may have raised objections to it. If it has not been possible to resolve these but the applicant disagrees with the decision, they can request an ex parte hearing. An ex parte hearing is an informal proceeding between the registered design applicant or registered proprietor (or their agent or representative) and the registrar. No other party may attend.
Additionally, an ex-parte hearing can be requested if the proprietor of a design which is already registered wishes to make a change of some sort but the registrar has objected to the amendment.
The hearing will give the applicant, proprietor or their representative a chance to present their case directly to the registrar. The hearing officer will issue an oral decision at the conclusion of the hearing.
The decision arising from the hearing can be appealed, but a full written decision must be requested if an appeal is sought.
Inter partes hearing
In disputes involving two or more sides, the registrar may have to give preliminary views on a range of issues between the parties during the proceedings. If one or more of the parties thinks they are being disadvantaged or disagree with the preliminary view they have the right to request a hearing to resolve the issue, this will be either a joint or interlocutory hearing. Usually the hearing officer will issue an oral decision at the conclusion of the hearing but a full written decision can be requested if a party wishes to appeal the decision.
At the end of legal proceedings before the registrar the parties have the right to request a hearing at which they have the opportunity to put their case to the hearing officer prior to the final decision. This is a main hearing. At the conclusion of the hearing the hearing officer will normally give a time scale for the issue of the formal written decision.
Inter partes hearings are more formal and will more closely follow the procedures of the high court with the hearing officer taking the role of judge. Each party will have a chance to put its case and the hearing officer will not allow argument between the parties during the hearing. The sequence of speaking will normally follow the same pattern as the filing of evidence, the party bringing the action will put their case, the defendant will put their case and respond to the other parties argument and then the original party concludes by responding to the defendants argument.
These are preliminary hearings held where the proceedings have not been ‘joined’. Proceedings are ‘joined’ when the forms commencing the proceedings have been accepted, sent to the defending party and they have filed a defence. Prior to the filing of the defence there are no proceedings before the registrar.
For a joint hearing to take place there is an issue over the actual commencement of the proceedings. Normally this will be a technical issue relating to the form filed to start the proceedings, this form and statement of case has not yet been sent to the defending party and they have not yet been invited to file their defence.
The party wishing to commence the proceedings will be given a period of time within which to request a hearing and the defending party will be invited to attend any hearing.
Decisions at joint hearings are normally given orally at the conclusion of the hearing and a full written decision can be requested if a party wishes to appeal that decision.
Also called procedural hearings. During inter partes proceedings the Registrar will have to take decisions on procedural issues, for example a request for an extension of time for filing evidence. At any time during the proceedings one or more parties may regard the preliminary view taken by the Registrar on a procedural issue as being detrimental to them.
Every time a preliminary view is given the parties are allowed a period of fourteen days to request a hearing to put their case before a Hearing Officer and this will be an interlocutory hearing. If no request for a hearing is received the preliminary view will be implemented.
Decisions at interlocutory hearings are normally given orally at the conclusion of the hearing and a full written decision can be requested if a party wishes to appeal that decision.
At the conclusion of the evidence rounds in inter partes disputes the parties have the option of accepting a decision based on the papers filed during the proceedings, in which case they will be allowed a period of time to file submissions (effectively what they would have said at a hearing), or they may request a hearing. In either case the decision will be taken by a hearing officer.
A main hearing is a formal proceeding with each party given a chance to put their case directly to the hearing officer, and to listen to and respond to the other parties argument. However, these are not court proceedings and parties will be limited in the number of times they may speak.
It is rare for decisions following main hearings to be given orally at the conclusion of the hearing and the hearing officer will normally reserve judgment and issue a written decision at a latter date. It is normal for the hearing officer to give a time table for the issue of the decision.
Request a hearing
We have responsibility for arranging all case management conferences, ex parte, procedural and main hearings.
Request an ex parte hearing
If an objection has been raised against your design application and you haven’t been able to resolve the matter with the examiner, you can request an ex parte hearing. You will need to write to the examiner requesting a hearing and the ex parte hearings team will arrange a suitable date for the hearing.
Request a case management conference/procedural hearing
During inter partes proceedings one or more parties may regard the preliminary view taken by the tribunal on a procedural issue as being detrimental to them. If a hearing request is made before the parties have entered into the evidence rounds, a procedural hearing will be appointed. Procedural disagreements which arise during the evidence stages will usually be dealt with at a case management conference.
A request for a hearing or case management conference must be made within 14 days of the date of the preliminary view and must be copied to the other party. The tribunal hearings team will then set the date for the hearing or case management conference. If no request is received, the preliminary view will be implemented.
Decisions at procedural hearings and case management conferences are normally given orally at the conclusion of the hearing and then confirmed in writing.
Request a main hearing (also called the substantive hearing)
Once all of the evidence is filed a letter will be issued and the parties can choose to have the hearing officer’s decision either by way of an oral hearing or, from the papers on file.
The parties have:
- 14 days to request an oral hearing from the date of the letter
- 28 days to provide written submissions to allow us to write the decision from the papers already filed
If one, or both of the parties, requests a main hearing then the tribunal hearings team will appoint a time and date.
Hearings are usually held at our London office through a video conference link to Newport where the hearing officer is located. Occasionally, we can hold them elsewhere if both parties request it. The parties are also welcome to attend hearings in Newport.
We will write to all parties concerned to confirm the hearing details once your request is in order.
Prepare for a hearing
At the hearing, the hearing officer will have with them the file of the case to be heard. It will have all the relevant correspondence and any evidence that has been filed.
The person attending the hearing, who can be there either to represent another party or themselves, only has to bring those papers relevant to the issues.
If any party is being professionally represented in an inter partes hearing they must provide a skeleton argument. This is a written document which will outline the way that they intend to argue the case. It should include any legal references they will make at the hearing.
The skeleton argument must be sent to the us at least 48 hours before the hearing. It must be copied and sent to the other party at the same time.
Because the hearing officer will have read the skeleton argument before the hearing takes place they will be able to prepare properly for the hearing. They will also be able to remind themselves of the legal references that are going to be used during the hearing.
If the case is complex you might wish to seek professional advice.
Cost of a hearing
We do not charge for hearings. However there may be cost implications following the hearing.
Scale of costs
At the conclusion of any proceedings before the tribunal the successful party may request that an award of costs be made in its favour. There is no upper limit to the award which may be made but it is established practice that the tribunal awards costs from an official scale of costs. For further information on cost awards in proceedings, please see Tribunal Practice Notice 2/2016.
The scale reflects a variable amount for the preparation, filing and examination of forms and for the amount and relevance of any evidence filed. A party without legal representation will be fully reimbursed the cost of any official fees, but will only receive 50% of the amount from the official scale. This ensures that the unrepresented party is not overcompensated for the cost of the proceedings.
Any costs awarded in proceedings before the tribunal will not cover all the costs of the proceedings and are only intended to provide a contribution towards the costs of the successful party.
Costs are not usually awarded against rights holders or applicants who do not defend an action brought without prior notification. However, where an action is defended, the provision or otherwise of prior notification will not usually affect the award of costs at the conclusion of the proceedings.
Where parties negotiate a settlement, it is expected that they will reach a decision between themselves as to costs and will not make a request to the tribunal for an award of costs.
A final decision issued by a hearing officer will normally include a statement on costs.
Before you can appeal a decision from us, you will require a written decision which will include the reasons why our decision has been reached. These reasons will outline the facts of the case that we have used in coming to our decision.
A written decision will be produced following any decision or hearing before us. Following a hearing the decision may simply take the form of a letter, which you may use as the decision for the purpose of lodging an appeal.
Results of past decisions are available.
Appealing a design decision
Any decision made by the tribunal can be appealed to either the appointed person or the High Court in England, Wales and Northern Ireland and the Court of Session in Scotland.
Appeals to the appointed person
An appointed person is a senior intellectual property lawyer appointed by the Ministry of Justice; he or she is totally independent of the tribunal. The appointed person offers a low cost alternative to appealing to the High Court.
The appointed person will normally make a decision following an oral hearing but a decision may sometimes be taken off the papers. Parties may be represented at the appeal hearing by a wide range of representatives, including solicitors, trade mark attorneys and barristers, or they may be unrepresented.
The appeal is a review of the hearing officer’s decision and is not a full re-hearing of the case. An appeal will only be upheld if the appointed person is satisfied that there has been a distinct and material error of principle in the hearing officer’s decision, or that the hearing officer was clearly wrong. At the completion of the parties’ submissions at the hearing, the appointed person will normally reserve judgment and issue a written decision at a later date.
The decision of the appointed person is final and it cannot be appealed to any higher body.
How to appeal to the appointed person
If you wish to appeal a decision you must:
- Submit a Form DF55 Notice of appeal to the appointed person which must be filed no later than 28 days after the hearing officer has issued the decision. There is no fee for appealing to the appointed person.
Appealing to the High Court
If you appeal to the High Court you should send us a copy of your appeal and keep us informed of the outcome as the tribunal does not play any part in those proceedings.
The procedure for making an appeal directly to the High Court is set out in the Civil Procedure Rules Part 52 for Appeals and Part 63 which relates to Intellectual Property claims.
What happens next in court proceedings?
When the judge has reached a decision, you must send us a copy of any order issued by the court so that we can put into action the court’s decision. It also helps if the sides involved in a case keep us up to date with the progress of an appeal to the court.
What does a court appeal cost?
You will need to ask the appropriate court, or read their rules, for information on court fees and what it could cost you if you lose your appeal. Your legal advisor will also be able to give you more guidance.
Occasionally, disputes can arise in relation to (IP) rights. Mediation is a type of alternative dispute resolution. There is mediation guidance available.
Legal professionals who specialise in IP are useful in helping you to understand, obtain and defend your IP rights. Details of professionals in your area can be obtained from any of the following organisations:
- Institute of Trade Mark Attorneys (ITMA)
- Chartered Institute of Patent Attorneys (CIPA)
- Law Society - can provide details of suitable solicitors in your area
- Bar Council - can provide details of barristers licensed for public access
Other sources of advice include:
- GOV.UK can provide advice on exploiting your ideas
- Enterprise Europe Network (EEN) are a European wide network, with a number of centres in the UK. Each can provide consulting services on IP rights
- NESTA,The National Endowment for Science, Technology and the Arts provide a useful handbook on invention and innovation
There are a number of other organisations geared specifically to helping inventors, especially lone inventors, to bring their ideas to market, and to provide advice on finding financial assistance. For example, The Institute of Patentees and Inventors (IPI) is a non-profit making organisation that specifically helps lone inventors.
Published: 8 May 2014
Updated: 13 May 2015
- Appealing a design decision, Appeals to the appointed person, How to appeal to the appointed person, Appealing to the High Court, What happens next in court proceedings and what does a court appeal cost information added.
- First published.