Tribunal Practice Notice (TPN 3/2007)

Preliminary indications in trade mark opposition proceedings: circumstances when they will not be issued

1. The registrar has reviewed his practice in relation to the issuing of preliminary indications. Rule 13B(1)(b) gives the registrar the power not to give a preliminary indication when he considers that so to do would be inappropriate; where the only earlier trade mark is a well-known trade mark as per article 6bis of the Paris Convention, the registrar has consistently declined to give a preliminary indication, as establishing that there is a well-known trade mark and if there is, the parameters of its rights, will require the filing of evidence. Where an application has proceeded upon the basis of honest concurrent use and the same earlier trade mark(s) is the sole earlier trade mark(s) upon which the opponent relies, the registrar has also declined to give a preliminary indication. A preliminary indication has not been issued where the parties have agreed that the issuing of one will hamper negotiations. The practice in relation to these three situations will continue; (of course from 1 October 2007 the provisions for honest concurrent use were rescinded).

2. In a number of cases the issue of likelihood of confusion is very finely balanced; the indication could easily go one way or the other. The purpose of the preliminary indication is to give an indication to the parties as to how it is likely that the decision will go on a prima facie basis; it is intended to aid the parties in deciding whether to continue with an application or opposition. With the abolition of refusal on relative grounds at examination stage, the rôle of the preliminary indication is likely to become more important. Where the decision is finely balanced it is difficult to see how it is helpful to the parties to give an indication; which could be highly influential in the decision of the parties as to whether to abandon or continue with the application/opposition. Where the hearing officer considers that a decision as to likelihood of confusion is finely balanced he/she will decline to give a preliminary indication.

3. It is considered that advising the parties that the decision is finely balanced will be beneficial to them as it could be a spur to try and overcome the conflict through negotiation/mediation.

4. There are occasions where the goods/services that are in conflict are of such a technical nature that it is impossible, without evidence (or possibly submissions), for the hearing officer to decide if they are similar or not. In such circumstances it would be perverse to give an indication as to the issue of similarity of goods. If there is sufficient similarity between the trade marks that there could be a likelihood of confusion, the hearing officer will decline to give a preliminary indication. Of course, if the signs are not sufficiently similar to give rise to a likelihood of confusion, the hearing officer will give an indication.

5. Large multi-class specifications of the opponent have to be compared with a large multi-class specification of the applicant sometimes. In some of these cases it will be very difficult for the hearing officer to come to a view across the spectrum of goods and services. In such circumstances the hearing officer may decline to issue a preliminary indication.

6. There may be circumstances other than those referred to above where the hearing officer will decline to issue a preliminary indication.

7. In future where it is decided that a preliminary indication will not be given, a letter will be sent to the parties advising them of this, giving the reasons for declining to give the indication. The form TM8 will be served on the opponent with this letter (under rule 13A(5) the indication date, where a preliminary indication is not given, is the date of the sending by the registrar of form TM8).

8. As is the case now, where a preliminary indication is given and the case is the subject of a full decision, the hearing officer will not take the preliminary indication into account. The new procedure does not mean that the full decision will automatically reflect the preliminary indication. The evidence and submissions of the parties will have to be taken into account and the hearing officer may take a different view to the hearing officer who gave the preliminary indication. The hearing officer issuing the preliminary indication and the hearing officer making the full decision will not be the same person, as is the current practice.

Please direct any enquiries about this notice to:

Raoul Colombo
Head of Law Section
Trade Marks Registry

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Phone +44(0)1633 811407
Fax +44(0)1633 811175