Hearsay evidence

Hearsay evidence in proceedings before the Comptroller except in Scotland

The Patent Office Practice Direction of 20 June 1995 ([1995] RPC 381) ceased to apply in relation to proceedings commenced on or after 31 January 1997 as a result of the entry into force of the Civil Evidence Act 1995 ("the Act") which amended the rules on admissibility of hearsay evidence in civil proceedings. In view of the definition of "civil proceedings" in section 11 of the Act and of the judgment of the High Court in St Trudo Trade Mark [1995] RPC 370, the Office is proceeding on the basis that the provisions of the Act govern hearsay evidence in proceedings before the Comptroller commenced on or after 31 January 1997.

Notice of hearsay in evidence given by affidavit and statutory declaration

In the vast majority of cases, evidence in proceedings before the Comptroller is required to be given by way of affidavits or statutory declarations which are filed and of which the other side is provided with copies well in advance of any hearing. Given the procedure for filing evidence in proceedings before the Comptroller, and the notice that is thereby given of the evidence that other parties are intending to adduce, no separate notice will generally be regarded as necessary in relation to hearsay evidence contained in affidavits and statutory declarations filed in the ordinary course of proceedings before the Comptroller (cf RSC Ord38, r21).

However, practitioners are reminded that if any affidavit or statutory filed in proceedings before the Comptroller contains hearsay evidence, the affidavit or declaration should comply with the general rules concerning the contents of affidavits and statutory declarations (see especially RSC Ord 41). If the affidavit or statutory declaration contains hearsay evidence, it should be filed in sufficient time and it should contain sufficient particulars to enable the other party or parties to deal with the matters arising out of its containing such evidence. If the provision of further particulars of or relating to the evidence is reasonable and practicable in the circumstances for that purpose, they should be given on request.

Considerations relevant to weighing of hearsay evidence

Practitioners are also advised to bear in mind that, pursuant to section 4 of the Act, in estimating the weight (if any) to be given to hearsay evidence in proceedings before the Comptroller, the Comptroller and those acting on his behalf shall have regard to any circumstances from which any inference can reasonably be drawn as to the reliability or otherwise of the evidence. Reference should be made to the factors of which the Comptroller may take account in estimating the weight (if any) to be given to hearsay evidence under section 4(2) of the Act. This states that regard may be had, in particular, to the following:

a. whether it would have been reasonable and practicable for the party by whom the evidence was adduced to have produced the maker of the original statement as a witness;

b. whether the original statement was made contemporaneously with the occurrence or existence of the matters stated;

c. whether the evidence involves multiple hearsay;

d. whether any person involved had any motive to conceal or misrepresent matters;

e. whether the original statement was an edited account, or was made in collaboration with another or for a particular purpose;

f. whether the circumstances in which the evidence is adduced as hearsay are such as to suggest an attempt to prevent proper evaluation of its weight.

Cross-examination of deponents

Where a party desires to cross-examine any witness on any affidavit or statutory declaration, reasonable written notice of that intention should be given to the other parties and to the Comptroller. Normally four weeks notice prior to the hearing would be regarded as reasonable notice. Sometimes longer notice may be appropriate, for example if a witness whom it is desired to cross-examine is known to be abroad or would otherwise find it difficult to attend within such a period. In general, the Comptroller will expect parties to co-operate in making their intentions as to cross-examination clear both to each other and to the Comptroller in such a way that difficulties are avoided.

Miscellaneous

In this Practice Direction "party" shall mean a party to proceedings before the Comptroller. "The Comptroller" means "the Comptroller-General of Patents, Designs and Trade Marks", and accordingly "proceedings before the Comptroller" includes proceedings before the Registrar of Trade Marks and the Registrar of Designs.

This Practice Direction shall apply to proceedings commenced on or after 31 January 1997.