Tribunal Practice Notices

Intellectual Property Office Crown Copyright Licence OGL

Jane Lambert

Tribunal Practice Notices ("TPN") are the equivalent to practice directions in the Civil Procedure Rules ("CPR"). They supplement the provisions of The Patents Rules 2007, The Trade Marks Rules 2008 and the Registered Designs Rules 2006 that relate to hearings in the Intellectual Property Office ("the IPO"). Unlike most of the practice directions in the CPR, they are not linked to particular rules.

The first TPNs were TPN 1/2000 Practice In Proceedings Before The Comptroller and TPN 2/2000  Costs In Proceedings Before The Comptroller. They were issued on 19 April 2000 by Alison Brimelow when she was Comptroller General of Patents Designs and Trade Marks and Chief Executive of the Intellectual Property Office as the Patent Office is now called.

TPN 1/2000 advised customers of changes in practice in the way the Office operated as a tribunal from 26 April 2000 to simplify and improve the speed of such proceedings and thereby the costs. Some of those changes required amendment of the Patents, Trade Marks and Designs Rules in force at that time but many others were introduced by altering established formal practice.

The main changes brought about by TPN 1/2000 were as follows:

• "The Office and parties should endeavour to complete with notice proceedings within 18 months. (paragraph 7)

• The periods for filing a counterstatement and evidence in patents, registered designs and design right proceedings has been shorted from two months to six weeks except when lodging an opposition, eg. opposition to amend a patent specification under rule 40(2). (paragraph 8)

• The periods for filing a counterstatement and evidence in trade marks revocation (on grounds other than non use), invalidation and rectification proceedings has been shortened to six weeks. However, the period will remain at three months in opposition and revocation on grounds of non use proceedings though an additional "cooling-off" period of three months at the start opposition proceedings will be granted when sought by both parties. (paragraph 9)

• Hearing Officers will have discretion to shorten prescribed periods. (paragraph 10)

• The Office will set a period within which a preliminary (interlocutory) hearing should take place and give parties 14 days to agree a date in that period. The Office will fix a date if after 14 days the parties do not agree a date within this period, although Hearing Officers may override the 14 days if there are genuine difficulties. (paragraph 13)

• At the commencement of the final evidence round, the Office will aim to fix a date for a substantive hearing for approximately four months later. (paragraph 14)

• The party commencing action should provide a statement of case which properly sets out the grounds on which the case against the other side is to be based. If a party fails to provide sufficient information, the Patent Office may challenge the statement. Until the statement of case is in order the proceedings will not be progressed. (paragraphs 15 to 19)

• The Office has provided broad guidelines on how to set out a statement of case. (paragraphs 20 to 25)

• A declaration of the truth of the information in claims and defences is required for trade marks proceedings and encouraged in other proceedings. (paragraph 27)

• The Office will accept a witness statement in evidence although Hearing Officers are authorised to require the filing of an affidavit or statutory declaration if they consider it necessary. (paragraph 30)

• Exceptionally the Office is prepared to accept unsigned witness statements or unsworn statutory declarations or affidavits as meeting time deadlines provided a proper version of the evidence is filed within a specified period. The Hearing Officer may impose a cost penalty if, in the event, the formal evidence is different from that originally filed. (paragraph 31)

• Where a party adduces evidence of a statement made by another person and does not call that person as a witness, the Hearing Officer may permit the other party to call that person and cross examine them. (paragraph 32)

• In deciding whether to grant specific disclosure, Hearing Officers will generally follow principles which mirror those applied by the courts. (paragraphs 33 to 37)

• The Office intends issuing questionnaires on a selective basis prior to evidence rounds. (paragraph 38)

• Hearing Officers will adopt the selective use of "case management conferences" taking into account the circumstances of the case, eg the need to clarify issues, the degree of complexity, any related actions and any wider public interest issues. (paragraphs 39 and 40)

• Hearing Officers are also empowered to call a "pre-hearing review" prior to a hearing which will give them the opportunity to clarify matters and issue directions on the conduct of the hearing. (paragraph 41)

• The Office will routinely ask parties if they have considered Alternative Dispute Resolution (ADR) and Hearing Officers will be prepared to stay proceedings where ADR is being used or seriously considered. They may also take into account a party’s unreasonable refusal to consider ADR when awarding costs. (paragraph 42)

• In patents revocation hearings the applicant will be invited to open proceedings while in trade marks opposition hearings the opponent will be invited to open. (paragraph 43)."

• Hearing Officers will retain discretion to deal with excessively long speeches and cross examination. (paragraph 44)

• Parties will generally be expected to supply skeleton arguments and authorities at least two days before a hearing. (paragraph 45)

• Adducing new evidence during a hearing will be discouraged and will only be allowed after the other party has had sufficient time to digest it. As a rule, documents will only be allowed to be introduced in cross examination which are designed to test the honesty and reliability of a witness. (paragraph 46)

• The Office will encourage parties to hold hearings, case management conferences and pre-hearing reviews using telephone conferencing arrangements and video links in suitable cases. (paragraph 47)

• Hearing Officers will offer parties the opportunity for proceedings to be decided without the need for a hearing. (paragraph 48)."

TPN 2/2000 set out the general practice with regard to costs.

One of more TPNs have been issued in most of the years since 2000.  Those issued before 27 July 2014 are to be found in The National Archives   More recent ones are indexed in the Tribunal practice notices collection on the British Government website.

The most recent TPN is TPN 1/2020 Disclaimers/Limitations of marks which was issued on 21 Feb 2020.  This TPN reverses the previous practice of excluding from consideration disclaimed elements of a mark when determining the likelihood of confusion including the likelihood of association with an earlier mark.   Paragraph 2 of the TPN states:

"The element(s) of a trade mark that is (are) subject to a disclaimer will be taken into account in the assessment of a likelihood of confusion with (or other damage from) a later mark, even where the disclaimed element is the only point of similarity with the later mark. 

Marks with rights limited to a specified colour (or colours) may be held to be confusingly similar to later trade marks in different colour(s), if the marks are sufficiently similar overall."

The reason for this change is the Court of Justice of the European Union's decision in  C‑705/17, Patent-och registreringsverket v Mats Hansson ECLI:EU:C:2019:481, [2019] EUECJ C-705/17, EU:C:2019:481.   Pa\ragraph [63] of the judgment states:

“Article 4(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as precluding national legislation making provision for a disclaimer whose effect would be to exclude an element of a complex trade mark, referred to in that disclaimer, from the global analysis of the relevant factors for showing the existence of a likelihood of confusion within the meaning of that provision, or to attribute to such an element, in advance and permanently, limited importance in that analysis.”

Anyone wishing to discuss this article, T{N 1/2020 or TPN, in general, may call me on 020 7404 5252  during office hours or send me a message through my contact form.