Practice Amendment Notice

PAN 1/01 - The Conduct of Ex Parte Hearings

The following will be published in Journals 6364, 6365 and 6366 on 31 January, 7 and 14 February 2001.

1. The Trade Marks Rules envisage that in cases where applications for registration are brought before one of the registrar’s appointed Hearing Officers, a decision should be taken once all submissions have been heard. Practitioners are requested to note the following guidance on the conduct of ex parte hearings.

The Purpose of the Hearing

2. An ex parte hearing is conducted as part of an administrative procedure in line with Rule 54 of the Trade Marks Rules 2000. Whilst it may be useful and productive to enter into dialogue regarding the outstanding issues, the purpose of the hearing is to give the applicant or his attorney the opportunity to make relevant submissions and so convince the Hearing Officer that the application should be accepted either in part or in full.

3. In the EUROLAMB trade mark case [1997] RPC 279, Mr Geoffrey Hobbs QC acting as the Appointed Person, heard arguments concerning whether or not there is an onus on the registrar to justify objections to applications. He decided that Section 37 is neutral and that there is no presumption in favour of, or against, registration. The combined effect of Section 37(4) and (5) of the Trade Marks Act 1994 is to eliminate the discretion that the registrar had formerly and to confine her role to making a judgement based upon the material available.

4. Having heard the applicant’s case and considered the material before him or her, the Hearing Officer will usually make a decision at the hearing and give brief reasons for it. If the decision is adverse to the applicant, the Hearing Officer does not have, and will not accept, the additional burden of justifying that decision to the satisfaction of the applicant or his attorney. If practitioners disagree with the decision of the Hearing Officer, the proper course is to request a written Statement of the Grounds of Decision and to lodge an appeal in the usual way.

5. Hearing Officers are sometimes asked if the filing of evidence is likely to overcome the objections taken. Hearing Officers will continue to endeavour to provide helpful suggestions whenever possible, but they cannot give prescriptive advice on the evidence necessary for a mark to achieve registration, especially when the view has been taken that the application falls a long way short of meeting the requirements of the Act. Any advice that is given by the Hearing Officer on the likelihood of evidence being able to overcome objections is not binding on the registrar, as the case for acceptance can only be decided once the evidence has been filed and carefully considered.

Attendance at the Hearing

6. The registrar has the power to appoint a hearing giving 14 days notice thereof. In practice most ex parte hearing dates are agreed with the applicant or his attorney. Once a date has been set the registrar will not agree to change the arrangement unless the reasons are compelling. Reasons such as "other appointments" or "instructions still awaited from the client" will not be accepted.

7. If there is to be a change of representative, the Hearings Clerk should be advised as soon as possible prior to the hearing. If Counsel is to be appointed, the Hearings Clerk should be advised no less than seven days prior to the date of the hearing.

8. The hearings rooms provide for a maximum of two observers. If the applicant is to be represented by more than three persons prior arrangements must be made with the Hearings Clerk. Hearing Officers will only agree to hear submissions from one person in respect of any one application.

9. Unless satisfactory reasons for non attendance are provided, failure to attend a hearing at the agreed time will result in the applicant being deemed to have abandoned his right to be heard. This will usually result in a final decision being taken from the papers. If the applicant has not previously responded to the examiner’s objection(s) in writing, refusal is mandatory under Section 37(4) of the Act.

Preparation in advance of the Hearing

10. Given the period of time that usually elapses between the issue of the Examiner’s report and the date of the hearing it is expected that, at the hearing, the attorney or applicant will be fully prepared to deal with the outstanding objections. It is also expected that the attorney will be in possession of full instructions from the applicant and will be familiar with the basic facts of the case, including basic details of any use of the mark that the applicant may wish to submit in evidence.

11. In cases where there is a large number of citations and the attorney or applicant wishes to put forward a revised specification as a means to overcome such objections, the provision of prior notice of the proposed specification should enable the Hearing Officer to give his or her view of the matter at the hearing. However, if the proposed specifications are only provided at the hearing, the Hearing Officer may have to take the proposals away for consideration. In these circumstances the applicant or his attorney may not receive the Hearing Officer’s decision on the proposal at the hearing.

Submissions received after the Hearing

12. The hearing should normally complete the examination process and applicants and their attorneys should not routinely expect to be allowed further periods of time. All substantive arguments should be made at the hearing. Therefore, Hearing Officers will not expect to receive subsequent submissions in writing that could have been made at the hearing. In cases where the Hearing Officer agrees to suspend the application following the hearing, the applicant or attorney will be expected to use the time allowed for the purpose for which it was granted.

Record of the Hearing

13. The hearing record is prepared for the official file and to provide feedback to the Examiner. It is copied to the applicant or the appointed attorney. Any disagreement with the recorded outcome of the hearing should be made clear to the Hearing Officer as soon as possible. He or she will seek to resolve the matter. If the outcome is accurately recorded but the attorney or applicant disagrees with other aspects of the record, for example the Hearing Officer’s account of the submissions made to him or her, the applicant or attorney may write to the Hearing Officer. The letter will be acknowledged and a copy placed on file next to the record of the hearing. Usually the Hearing Officer will not enter into further correspondence on the detail of the hearing record.