The Terms that are incorporated into every Agreement to register a Domain Name

 

Jane Lambert

One of the reasons why the internet works as well as it does is that there is a fast and relatively inexpensive procedure for resolving disputes between brand owners and domain name holders.  That procedure is contained in a document called the Uniform Domain Name Dispute Resolution Policy ("UDRP"). The UDRP is incorporated by reference into every agreement for the registration of a generic, and many country-code, top-level domain names.  Domain names ending in ".com", ".org" or ".biz" are examples of generic top-level domains ("gTLD"). Domain names ending in a two-letter country code such as ".nu" (Niue). ".tv" (Tuvalu) or ".ws" (Samoa) are country code top-level domains ("ccTLD").

The UDRP is incorporated into domain name registration agreements upon the insistence of a not-for-profit California company called the Internet Corporation for Assigned Names and Numbers ("ICANN").  ICANN was established at the behest of the United States government to regulate the allocation of domain names.   ICANN subcontracts the registration of gTLD to businesses known as "registrars" and ccTLD to national domain name registration authorities.  One of the terms of ICANN's agreements with those registrars and authorities is that the registrar or authority will incorporate the UDRP into every agreement for the registration of a domain name that it enters with a third party. 

Para 1 of the Policy states that the UDRP's purpose is to set forth the terms and conditions in connection with a dispute between the domain name holder and brand owner over the registration and use of an internet domain name.  In the Policy the pronouns "we" and "us" refer to the registrar or other authority and "you" to the person registering, maintaining or renewing a domain name.

An important but frequently overlooked provision of the Policy is para 2 which sets out the representations and warranties that every person seeking to register, maintain or renew a domain name makes to the registrar or other authority.  It will be recalled that a representation is an assertion as to a fact, true on the date the representation is made, that is given to induce another party to enter into a contract or take some other action and a warranty is a promise of indemnity if the assertion is false.  These representations and warranties are as follows:

"(a)    the statements that you made in your Registration Agreement are complete and accurate; 

(b)    to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; 

(c)    you are not registering the domain name for an unlawful purpose; and 

(d) you will not knowingly use the domain name in violation of any applicable laws or regulations."

It is the responsibility of the person seeking registration, maintenance or renewal of the domain name to determine whether the domain name registration infringes or violates someone else's rights.  It will be appreciated that these are onerous obligations.

Para 3 of the Policy sets out the circumstances in which a registrar or other authority may cancel, transfer or otherwise make changes to a domain name registration.   These include "receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy".  

Para 4 sets out "the type of disputes for which you are required to submit to a mandatory administrative proceeding."  Subpara (a) provides:

"Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present."

Para 4 states that those proceedings will be conducted before one of the following administrative-dispute-resolution service providers:

• Arab Center for Domain Name Dispute Resolution 
• Asian Domain Name Dispute Resolution Centre
• Canadian International Dispute Resolution Centre
• The Czech Arbitration Court Centre for Internet Disputes
• National Arbitration Forum, and
• World Intellectual Property Organization ("WIPO").

Each of those service providers has a list of panellists who will decide the dispute on the documents that the parties submit to them.   Those documents will always include a complaint and exhibits known as annexures from the brand owner.  Sometimes there will be a response from the domain name holder.  After receiving the complaint and any response that may have been filed the service provider will appoint a member of its panel to determine the dispute as a sole panellist.  If the respondent pays an additional fee each of the parties may choose a panellist for a three-member panel.

Most panellists are lawyers specializing in intellectual property or patent or trade mark attorneys.  I have served on the WIPO panel for nearly 20 years.  I have also drafted complaints for trade mark owners and responses for domain name holders.  Complaints and responses are submitted on online forms.   In the next and subsequent articles, I will discuss how to complete the complaint or response in a way that is likely to appeal to a panel. I will also warn of the sort of submissions that are likely to infuriate the panel. Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 or send me a message through my contact page. 

The IPR Help Desk's Domain Name Primer

 

Jane Lambert

The IPR-Helpdesk is an EU-funded service that supplies information on intellectual property to small and medium enterprises.  It carries out research into IP, publishes regular newsletters and other publications and holds webinars and other events.  Among its most useful publications are infographics that communicate essential information in a digestible format.

The latest of those infographics is on Domain Names and Cybersquatting which can be downloaded free of charge from the EU Publications Office.  That document explains what is a domain name, what is meant by the terms TLD (top-level domain), second-level domain and third-level domain and the difference between generic and country-code top-level domains.  It discusses how to register domain names, the practice of cybersquatting and what can be done to prevent it.

Readers who require further information on domain names, cybersquatting and dispute resolution may read my articles on Domain Name Disputes and Dispute Resolution Policies and Domain Name Glossary.  The Uniform Domain Name Dispute Resolution Policy is one of the most successful alternative dispute resolution schemes in the world.  For a few hundred United States dollars, trade mark owners or those who could bring an action for passing off can apply for the transfer or cancellation of a domain name that is the same as or confusingly similar to their trade mark. 

Such applications come before administrative panels (of which I am one) who decide whether the domain name is the same or confusingly similar to a trade mark in which the complainant has rights,  whether the domain name holder has any rights or legitimate interests in the disputed domain name and whether the domain name was registered and is being used in bad faith.    If the panel finds in favour of the complainant on all those issues he or she can order the transfer of the domain name to the complainant or its cancellation,   The whole process is completed within a matter of weeks.   Usually, far less time than would be required for a claimant to issue and serve proceedings in the English courts and for the defendant to respond.   

The UDRP has been adopted by many other domain name registries including Wales (see my articles Welsh Top Leval Domain Names  12 April 2019 and Welsh IP Cases: D2016-0485 ALDI GmbH & Co. KG v. Mahfuz Ali  13 April 2019 NIPC Wales).  Many others such as Nominet regulates the ".uk" space and the Swiss domain name authority have similar policies.   To see how the process works just read my decision in Re D2022-1858 lancastersarchery.com.

Readers may be interested to learn that I do not confine myself to deciding domain name disputes.  I also advise and represent parties to such disputes.   As a panellist, I know exactly what the tribunal that will decide the dispute is looking for.   Having such insight, I can usually offer a much more successful and cost-effective service than most others.   Those who want to learn more can call me on +44 (0)20 7404 5252 or send me a message through my contact form.

Auntie Jane's Trade Mark Tips No 10 - Passing Off

Jif Lemon

Author Paul Hurst Licence CC BY-SA 2.5 Source Wikimedia Commons

 

Jane Lambert

Since 1876 it has been possible for suppliers to protect their brands by registering signs that distinguish their goods from those of all other suppliers as trade marks with the Intellectual Property Office.  There is, however, a much older judge-made protection known as the law of passing off.  Lord Oliver summarized that law as "no man may pass off his goods as those of another."

Lord Oliver said those words in a speech in the House of Lords in a case called Reckitt and Colman Products Ltd v Borden Inc. [1990] UKHL 12, [1990] 1 WLR 491, [1990] 1 All ER 873, [1990] RPC 341, [1990] WLR 491.  For many years, the claimant company had sold lemon juice in squeezable lemon-size plastic containers like the one in the photo. They claimed that that packaging distinguished their juice from the juices of all other suppliers.  When the defendant tried to supply lemon juice in squeezable lemon shape plastic containers, the claimant complained that such packaging led consumers to buy the defendant's juice in the belief that it was the claimant's.  Proceedings were brought in the High Court which ended up in the House of Lords, then the highest court of appeal in the United Kingdom.

Lord Oliver was one of the judges who heard that appeal.  In deciding that case, he set out the elements that a complainant has to prove:

"First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff."   

There is considerable overlap between trade mark law and the law of passing off, Very often, brand owners sue for both causes of action.  There are, however. important differences that allow claims to be brought under one head but not under the other.

Probably the most significant of those differences is that a claimant has to prove that he or she has goodwill by reference to a mark, get-up or other indicia.  That usually requires evidence of sales and advertising under a mark over time.  By contrast, the owner of a registered mark may sue for infringement of that mark before he or she has made a single sale,  Conversely, it is sometimes possible to sue for passing off where the defendant has used a mark that cannot be registered as a trade mark.

Rights to bring actions for passing off can be important in trade mark law.  One of the grounds for opposing an application for the registration of a trade mark or invalidating a registered mark is that the use of the trade mark can be prevented by an action for passing off (see s.5 (4) (a) of the Trade Marks Act 1994).

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.

Auntie Jane's Trade Mark Tips: No. 9 Infringements

Rolls Building

Author Judicial Office UK Licence CC BY-SA 4.0 Source Wikimedia Commons

 

Jane Lambert

In my fourth trade mark tip, "What is a Trade Mark?" I wrote that a trade mark must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. That is the function of trade marks.

There are three ways in which that function can be interfered with:-

The first is by using a sign that is identical to the mark in relation to goods or services that are identical to those for which the mark is registered.  That is barn door counterfeiting,  There is no need to show that anyone is deceived or confused,  It is actionable under s.10 (1) of the Trade Marks Act 1994.

The second way is to use a sign that is identical or similar to the mark in respect of goods or services that are the same as or similar to those for which the mark was registered.  Liability arises where there is a likelihood that the public will be confused because the sign is the same as or similar to the mark and the goods or services are the same as or similar to those for which the mark was registered.  Such likelihood should include the likelihood of association with the trade mark.  That is actionable under s,10 (2) of the Act.

The third is to use a sign that is the same as or similar to a mark that has a reputation in the UK.  It does not matter whether the goods for which it is used and the same or similar to those for which the mark is registered.  An action arises if the use to which the sign is put takes unfair advantage of or is detrimental to the distinctive character or repute of the mark without due cause.  That is actionable under s. 10 (3).

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.  

"Can Somebody register my Sign as a British Trade Mark now that EU Trade Marks no longer apply to the UK?"

Menai Science Park, Anglesey

© 2018 Jane Elizabeth Lambert 

  

Jane Lambert

Last Tuesday I gave talks on what every startup and SME should know about IP to the BradfordNetwork and the Menai Science Park Enterprise Hub. You can download my slides for the BradfordNetwork and the Enterprise Hub from Slideshare.  At each of those talks, I was asked how to protect a brand in the UK now that the European Union trade mark no longer applies to the UK.  As this question is likely to have been asked in places other than Wales and Yorkshire I decided to reply in NIPC Branding. 

The good news to people who hold EU trade marks is that your sign is still protected in the UK in respect of the same goods and/or services even though your EU trade mark ceased to apply to the UK at 23:00 on 31 Dec 2020.  Art 54 (1) (a) of the agreement by which the UK withdrew from the EU provides that:

"the holder of a European Union trade mark registered in accordance with Regulation (EU) 2017/1001 of the European Parliament and of the Council1 shall become the holder of a trade mark in the United Kingdom, consisting of the same sign, for the same goods or services;"

You do not even have to pay for the registration because art 55 (1) of the same agreement states:

"The registration, grant or protection pursuant to Article 54(1) and (2) of this Agreement shall be carried out free of charge by the relevant entities in the United Kingdom, using the data available in the registries of the European Union Intellectual Property Office, ....."

These articles were carried into effect by reg 2  and Sched 1 of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI2019 No. 269) as amended by reg 8 and reg 9 of The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (SI 2020 No 1050).

Those regulations inserted a new s.52A and Sched. 2A into the Trade Marks Act 1994:

"Schedule 2A makes provision for European Union trade marks (including certain expired and removed marks) to be treated as registered trade marks with effect from IP completion day and about certain applications for a European Union trade mark made before IP completion day."

"IP completion day" means the end of the transition period when EU law continued to apply to the UK which happened at 23:00 on 31 Dec 2020.  Para 1 (1) of the  new Sched, 2A, provides:

"A trade mark which is registered in the EUTM Register immediately before IP completion day (an “existing EUTM”) is to be treated on and after IP completion day as if an application had been made, and the trade mark had been registered, under this Act in respect of the same goods or services as the existing EUTM is registered in the EUTM Register."

You don't need to do a thing unless you do not want a British registration in which case you can opt out under para 2 of the Schedule. In its new story, Intellectual property after 1 January 2021, the IPO says:

"receive a UK registration certificate, but you will be able to access details about the trade mark on GOV.UK and can take a screen shot from there as evidence of your right."

So if any chance wants to try to grab your sign in the UK he or she will find his way blocked by your registration just as he or she would have done before 23:00 on 31 Dec 2020.

Your EU registration will continue to apply to the other 27 member states of the EU in the same way as it has always done.  The only problem is that you will no longer be able to seek an EU wide injunction from a court in the UK because the courts of England, Wales, Scotland and Northern Ireland have ceased to be EU trade mark courts.  Happily, the Commercial Court of the Republic of Ireland is still an EU trade mark court and my colleague James Bridgeman SC who qualified as a trade mark attorney before reading for the Irish Bar can continue to represent you in that court as well as the Court of Justice of the European Union, the General Court and the courts of England and Wales.

If you want to learn more about this subject, you may want to consult How Brexit has changed IP Law 17 Jan 2021 and my presentation and handout on the topic on 26 Jan 2021.  If you want to discuss this article with me you cn call me on 020 7404 5252 during office hours or send me a message through my contact form at any time.

Small Packages - Great Idea

The University of California, Irvine

Author Poppashoppa22 Licence CC BY0SA 2.5 Source Wikipedia, University of California, Irvine

 

Jane Lambert

The University of California is a federal university with campuses spread across a wide geographical area rather like the University of Wales.  I was at the University of California, Los Angeles (UCLA) which has recently celebrated its 100th anniversary.  Another campus of the University is the University of California, Irvine (UCI)   Graduates of the several campuses of the University living in the United Kingdom are kept in touch with their almae matres and with each other by the University of California, Trust (UK).

Yesterday the Trust sent me an email headed "University of California Events - Oct 30-Nov 13, 2020". One of those events was an interview with a UCI graduate called Julie Schecter entitled "Entrepreneurship with Julie Schecter - UCI" at 20:00 UK time that very evening.  It continued:

"Learn the challenges and rewards of starting a new business with Julie Schecter '07, founder of Small Packages during this Campuswide Honors Alumni Chapter webinar."

As I specialize as an intellectual property lawyer in advising startups and other small and medium enterprises on protecting their intellectual assets (brands, designs, technology and works of art and literature) with intellectual property rights and also on exploiting and enforcing those rights I registered for the webinar.  I wanted to see what I could learn and also whether I could contribute to the discussion.

Although I am many decades older than Julie, we have two things in common.  We are both lawyers and we share a love of dance.  Julie read law at Harvard Law School which is one of the best in the United States and probably the world whereas I read for the English Bar at Lincoln's Inn in London.  She was a dance major at UCI.  I studied economics, modern and medieval history and moral philosophy at St Andrews graduating with honours in US history(which is why I went to graduate school in the USA). However, I helped to found the University Dance Club some 50 years ago and learned how t do my first plié as an undergraduate. I still attend ballet class several times a week at age 72 and I blog about dance in Terpsichore. 

Julie's business is called "Small Packages".  She founded it in 2018.  It is basically a gift service for those who want to congratulate their friends, relations and acquaintances when something good occurs in their lives such as an engagement, birth or birthday, or commiserate when something unpleasant happens like a bereavement or illness.  Gift boxes come in three sizes: US$35 (£27.04),  US$55 (£42.48) and US$100 (£77.25),  The US$35 birthday box, for example, contains a handwritten card, candles, sweet and salty crackers (wafer biscuits), Elizabeth Gilbert's Big Magic and a "happy mask",  The US$100 "This is the worst" box contains a handwritten card, chocolate shortbread, hair turban, Mari Andrew's Am I There Yet?, fuzzy socks, a key chain, candles and tea.  

Julie describes her mission as "Take a huge bite out of the loneliness epidemic" which is a lovely idea, particularly in a country as big as the USA when a close friend or relation may be many thousands of miles away.  Her service must be especially welcome with current travel and contact restrictions.  Indeed, one of her gift box range is designed for folk in quarantine.  

I had intended to ask Julie about raising capital as that is a problem for many of my clients who have similar businesses to Julie's.  However, someone asked that question just as I was about to type mine.  Her initial investment came from friends and family. More recently she has raised money through crowdfunding.  I did, manage to ask her a question about intellectual property,  I asked her whether she had incorporated intellectual property into her business plan.  She replied that she had.

The reason I asked that question is that a Mr Trademan of the US Trademark and Patent Office (yes that really is his name) posed it to an audience of entrepreneurs at a videotaped lecture entitled Basic Facts 01: What Every Small Business Should Know Now, Not Later (USPTO),  Mr Trademan asked his audience of entrepreneurs and business owners how many of them had a business plan. There was a forest of raised hands.  He then asked how many had incorporated trade marks into their business plans.  Not a single person raised his or her hand.  Julie had been very prudent in incorporating IP into her business plan right from the start but such prudence is very rare on this side of the Atlantic as it was in Mr Trademan's audience.

Julie's company has a lot of policies that I like.  For instance, she sources at least 10% of her supplies from businesses owned by African Americans.  Rather than hire expensive consultants and contractors she teaches herself some basic skills.  She taught herself digital marketing to conduct social media campaigns.  As she says (and as I tell my clients) there is an enormous amount of information on the internet on business topics and much if it is free or inexpensive.  In this country, I recommend the Business and IP Network at the British Library and its regional partners.

The chair, Arlene Ho, asked Julie why and how she changed from law to business.  She worked for a good law firm and enjoyed her job but she wanted a different challenge,  Her first business was actually in dance but it did not develop as expected.

I thoroughly enjoyed the webinar and I am very grateful to Arlene or her colleagues for announcing it in the UC Trust (UK) newsletter thereby allowing graduates of other UC campuses in the UK to attend. Not much good has come out of this murderous pandemic but perhaps the opportunity to attend webinars such as this (which I would not otherwise have attended) is part of a very threadbare silver lining.  I wish Julie every success with her venture and Arlene and her colleagues at UCI all the best with their future webinars.

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.