Substitution of opponents in inter partes proceedings
This notice is to advise practitioners of a change in the Registrar’s practice which affects oppositions where a request is made to replace one opponent in inter partes proceedings before the Registrar with another. This notice replaces the Journal Notice previously published in Trade Mark Journal numbers 6271-6274.
At a recent appeal hearing at the High Court, Mr Justice Pumfrey determined that the Registrar of Trade Marks had the inherent jurisdiction to allow the substitution of one opponent for another in opposition proceedings before her. He decided that there was nothing in the Trade Marks Act 1938, the Trade Marks Act 1994 or the Trade Marks Rules 1994 (as amended), which prevented the exercise of the inherent jurisdiction in that way. In the course of his judgement, Mr Justice Pumfrey indicated that the former practice set out in an earlier version of the Trade Marks Registry's Work manual (Chapter 15) was a sensible approach to the consideration of such requests.
In light of Mr Justice Pumfrey’s judgement, the Registrar's practice in relation to the substitution of opponents will be as follows:
Where there is a transfer of interest in a mark:
An opponent may cite the existence of an application or registration in their ownership in their grounds of opposition, or may claim to have rights in a mark for which no application has been made. If they later sell or assign these rights, the new owner may ask for their name to be substituted as opponents. If there is an application to record the transfer as a registrable transaction or they can provide suitable documentation to confirm the transfer, the Registrar will usually allow the request subject to any comments made by the applicant. If the applicant objects it may prove necessary to arrange an interlocutory hearing. If the transfer is to be allowed, the new opponent will be asked to provide written confirmation that they:
- have had sight of any forms or evidence filed, if not, they will have to make arrangements with the original opponent
- stand by the grounds or statements made in the Notice of Opposition/evidence and confirm that where the name of the original opponent appears this should be read as though it is made in their name
- are aware of and accept their liability for costs for the whole of the proceedings in the event of the opposition being unsuccessful, to the extent that the new opponents will be asked to provide Security for Costs of an amount to be determined by the Registrar
The new opponent must also provide details of an address for service in the UK.
The transfer will not be allowed until such time as the Security for Costs have been provided.
If the written confirmation as detailed above, and the Security for Costs are not provided, the substitution will not be allowed.
Where there is no transfer of interest:
Where the Registrar is asked to allow a new party to be added or substituted as the opponent and that the request is not due to a transfer of the rights to a pending application or a registered mark, the request may not be allowed.