Trade mark hearings and how to appeal against an outcome.
More often there are two types of disputes that you might find yourself in:
- a disagreement with us about an objection raised against your trade mark
- a disagreement with someone else about a trade mark
There are several ways in which you can resolve your dispute, including:
- request an ex parte hearing – to resolve a dispute between you and the office
- request an inter parte hearing – to resolve a dispute between you and someone else
- give advice on mediation and professional help
Types of hearings
If the examiner of your trade mark application has raised objections and you haven’t been able to come to a satisfactory conclusion through contacting the examiner, an ex-parte hearing may be the only way to take things forward.
An ex-parte hearing can also take place when the proprietor wishes to make a change of some sort to a registered trade mark and we have objected to that change
An ex-parte hearing is chance for you to discuss the case with a senior officer who must decide whether or not the original examiner was correct and what, if anything, can be done to resolve matters.
The hearing can take place over the telephone, via video conference facilities or if you do not wish to attend you can request a review of the correspondence already filed. You can represent yourself or get someone else to speak on your behalf such as a trade mark attorney.
At the end of the hearing the hearing officer may tell you what their decision is, or they may tell you that they need more time and will send you a written decision. Sometimes the hearing officer may give extra time in order for you to give further submissions or file extra material. Whatever the hearing officer decides will be communicated to you in writing shortly after the hearing.
The final decision can be appealed, but (if you don’t already have one) you must ask us for a full written decision.
In disputes involving two or more sides, the tribunal 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, then they have the right to request either a procedural hearing or a case management conference (CMC) on the matter (or to make written submissions) before the decision is implemented. Usually the hearing officer will issue an oral decision at the conclusion of the procedural hearing or CMC which is later confirmed in writing.
Procedural hearings and CMCs will normally take place via telephone or video conference.
At the conclusion of the proceedings either party may request the appointment of a main hearing to make oral submissions to the hearing officer on the substantive matters of the case. Following the hearing the hearing officer will issue a decision which will include full reasons in support of the decision.
Inter partes hearings closely follow the procedures of the court with the hearing officer taking the role of a 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.
Where procedural disagreements arise, whether between the parties or between the tribunal and a party/parties, and where a party/parties are not content to accept the tribunal’s preliminary view on the matter, a procedural hearing may be requested to resolve the issue. Such a hearing will normally deal with matters arising during the pleadings stage either before the parties have filed evidence or, where the proceedings have not be ‘joined’. Proceedings are ‘joined’ when the forms commencing the proceedings have been accepted by the tribunal, sent to the defending party and they have filed their notice of defence. Prior to the filing of a defence, there are no proceedings before the registrar’s tribunal.
Case management conference
If procedural disagreements arise after a defence has been filed, the matter will usually be resolved by holding a CMC. Examples of matters resolved at such a hearing would be extension of time requests, whether cases should be consolidated (joined together), confidentiality orders, suspension of proceedings, and the cross-examination of witnesses.
At the CMC, the hearing officers will use their wide case management powers to make appropriate directions to the parties covering all aspects of the future management of the case. Such directions may include the setting of a timetable and structured framework to ensure that the proceedings are concluded within a timely manner whilst keeping costs to a minimum.
At the conclusion of the evidence rounds the parties have the option to either have the hearing officer make the decision based on the papers filed during the proceedings (in which case they will be allowed a period of time in which to file written submissions in lieu of what they would have said at the hearing), or they may request a hearing. At the hearing each party will have the opportunity to make oral submissions to the hearing officer.
Hearings are generally held via a video conference link between our London and Newport Offices, or on the telephone. In certain circumstances, where for example cross- examination of a witness has been requested, we can arrange for a hearing to be held in person in either London or Newport.
At the completion of the parties’ submissions at the hearing, the hearing officer will normally reserve judgement and issue a written decision at a later date. The decision can be appealed either to the appointed person or to the court.
Requesting a trade mark hearing
We have the responsibility for arranging all ex-parte, procedural, CMCs and main hearings.
Requesting an ex parte hearing
If an objection has been raised against your trade mark 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.
Requesting 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 evidential 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.
Requesting a main hearing
At the conclusion of the evidence periods, the parties may either request the appointment of a main hearing, or ask for the hearing officer’s decision to be made from the papers on file.
The parties have:
- 14 days to request an oral hearing from the date of the letter, or
- 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.
Preparing for a trade mark 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.
Where skeleton arguments are required they must be sent to the following fax number: 01633 817777 or emailed to Tribunalsection@ipo.gov.uk and received by the Tribunal by 2pm two working days before the hearing, regardless of the start time of the hearing. For example, for any hearing due to take place on a Thursday, the skeleton arguments must be filed by 2pm the previous Tuesday. As with all other correspondence, a copy must be sent to the other party.
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 proceedings
How much do they cost?
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.
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.
Following the hearing, the hearing officer will issue a written decision which will outline the facts of the case and the full reasons in support of the decision.
Following a procedural hearing or CMC, the decision may simply take the form of a letter, which may be used as the decision for the purpose of lodging an appeal.
Appealing a trade mark 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.
Where a decision has been given following an ex parte hearing and the party wants to appeal that decision then a request for a written statement of grounds must be made on form TM5 - Request for a statement of reasons for registrar’s decision.
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 judgement 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 which only affects the applicant for registration (ex-parte) you must:
- Submit a Form TM55 Notice of appeal to the appointed person there is no fee for this form, it must be filed within 28 days after the hearing officer has issued the decision
If you wish to appeal a decision issued in proceedings between two or more parties (inter-partes) you must:
- Submit a Form TM55P ‘Notice of appeal to the appointed person’ this costs £250.00 and must be filed within 28 days after the hearing officer has issued the decision
Appealing to a 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.
Unpaid costs orders
If you win an inter partes dispute, you may be entitled to a contribution to the costs from the losing party. As part of every decision, we will decide the amount of costs that should be paid.
These costs orders create a legal debt and may be enforced in the same way as an order of the High Court.
We have no power to enforce the order. But, the rules provide for a party to proceedings to request security for costs from any other party engaged in the proceedings.
If there is reason to doubt that a costs award may not be honoured, then we may take this into account when exercising discretion in response to a request for security for costs.
Help with unpaid cost orders
We are prepared to provide some help when cases are brought to our attention where
- those costs have not been paid, and
- where we have satisfied ourselves that the complaint is justified
We will write to the party reminding them of their legal obligation to pay the cost order. If they do not then we will publish that fact.
In publishing these details, our aim is to provide an incentive for parties who owe the sums covered by cost orders to settle matters without the need for the winner to incur further legal costs enforcing the order.
If you still receive no payment, then you should apply to the High Court to enforce the award.
Hearings and appeals diaries
Diaries are available showing scheduled main hearings, interlocutory hearings and appeals to the appointed person.
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:
- Chartered Institute of Trade Mark Attorneys (CITMA)
- 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.