Tribunal Practice Notice (TPN 5/2000)

Hearings before The Registrar of Trade Marks under Rule 54 of The Trade Marks Rules 2000

1. The purpose of this notice is to advise parties of several changes in practice concerning the appointment and conduct of hearings. Primarily, the notice relates to the appointment of substantive hearings and replaces the notice published in the Trade Marks Journal number 6196 on 8 October 1997. The current practice as set out in that notice has worked well with parties being given four months notice of the date for the substantive hearing. However, despite this and other steps taken by the Registry, there are still delays in appointing hearing dates. The registrar remains aware that after completion of the evidence stages parties wish to be heard and for a decision to be issued as soon as possible. Following discussions with interested parties including the representatives of I.T.M.A. and CIPA, certain practices in relation to the conduct and appointment of substantive hearings are to be changed.

2. The changes are set out in detail below, they will come into effect from 2 January 2001 and can be summarised as follows:

(a) At the conclusion of the evidence rounds a Hearing Officer will review each case and consider whether the proceedings seem appropriate to be determined from the papers on file. If the Hearing Officer is of the view that the case is suitable for determination without a hearing a letter will be issued to that effect. A similar review will be carried out on all cases currently awaiting the appointment of a substantive hearing. However, parties will retain their right to be heard.
(b) If either party requests a hearing, a date will be set and the parties informed. As at present, parties will not be contacted prior to the date being set. Parties will be given at least one months notice of the date.
(c) When appointing hearings, the Registry will sometimes appoint one hearing for the morning session and one for the afternoon, to be taken by the same Hearing Officer. If parties are of the view that the hearing on their case will take longer than half a day, they must inform the Hearings Clerk at the earliest opportunity.
(d) All parties professionally represented at Substantive Hearings (and Preliminary Hearings) are to submit a skeleton argument. These should be received at least 24 hours in advance of the Hearing and should be copied to the other side.

3. Each of these points will now be covered in more detail.

(a) Review of the Proceedings

At present, parties are given one month from the date of the final round of evidence to request a hearing. In many cases, where perhaps the only substantive ground of opposition is based upon Section 5(2) of the Act and there is no expert evidence which might give rise to a particular set of circumstances which would require departure from the basic tenets set out in Sabel BV v Puma AG [1998] RPC 199, Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc [1999] RPC 117 and in Lloyd Schufabrik Meyer & Co. GmbH v. Klijsen Handel B.V. [2000] FSR 77 (apart from the fact that all cases must be considered in the round) then an oral hearing in order for the representatives of the party to recite large portions of the above mentioned decisions is not a good use of anyone's time. In those circumstances the Trade Marks Registry believes that a hearing may not add to the substance of the case and that a Hearing Officer is well able to take a decision on the basis of the evidence filed and based on the judicial authorities which are well known.

Therefore, following completion of the final round of evidence a Hearing Officer will review the evidence filed in the proceedings. If the Hearing Officer is of the view that the case is one that could be determined from the papers then a letter will be issued to that effect. Unless either party requests a hearing, it will be the intention to take and issue a written decision from the papers. The advantage of such an arrangement is that these cases will be less resource intensive in that no time will need to be set against the case for a hearing and therefore a more speedy decision can be issued for the benefit of both the parties and the Trade Marks Registry. If a party or parties wish to make submissions they could of course be made in writing rather than orally. It should be noted that whilst the Trade Marks Registry would wish, where appropriate, to encourage parties to have proceedings determined from the papers either party retains their right to a hearing.

There are a large number of cases awaiting the appointment of a hearing following a request by one or both parties. It is intended to apply the above practice to these cases. A Hearing Officer will therefore review the cases and, where it is felt that a decision could be taken from the papers, the parties will be informed by letter and asked to confirm whether they still wish to be heard.

(b) Appointment of Hearing Dates

When a hearing is requested the Hearings Clerk will write to the parties involved, notifying them of the date on which the hearing will take place. It is intended that in time the parties will be given a hearing date at the commencement of the final round of evidence and thus we will be dispensing with the current four months notice. Instead one months notice of the date of the substantive hearing will be given. In the letter informing parties of the date of the Hearing, the Clerk will ask who will represent the parties. The reduction of the period of notice to one month should help us deal more effectively and more efficiently in the short term with the current backlog of cases because it will be easier to substitute one case for another in the event of a postponement or cancellation.

The registrar will not negotiate an alternative date with the parties unless the circumstances are very exceptional. The registrar will consider changing an appointed hearing date, only if the parties mutually agree an alternative date before approaching the registrar, and the proposed new date is put forward at least two weeks prior to the hearing. The new date for the hearing should be within two months of the original date. It may be possible to appoint an earlier date if both parties agree and the Hearing Officer is available.

Any party seeking to cross-examine any witness, must make such a request to the Registrar when requesting the appointment of a hearing. This revised practice of setting Substantive Hearing dates will cover all substantive proceedings including those where Counsel will represent one or both of the parties.

It will be assumed that oral submissions on cases set down to be heard will not extend beyond half a day. That being so, more than one case may be listed for a Hearing Officer on one date. This will again go some way to help advance hearing dates and reduce the backlog. It will also compensate for the cases that inevitably fall away as a result of withdrawal or postponement. The letter informing the parties of the date for the hearing will indicate whether a morning or afternoon session has been set aside for the hearing. If the parties are of the view that a half day will not be sufficient for the hearing then they should inform the Hearings Clerk at the earliest opportunity, and in any case within 14 days of the date of the letter informing them of the appointment of the hearing. Alternative arrangements can then be made. As a matter of practice the Registry will not allocate a half day session to cases where it appears clear that the case may take more than half a day to complete eg where cross-examination has been agreed.

(d) Skeleton Arguments

In line with the Woolf proposals agreed by the Standing Advisory Committee, and the practice set out in the Tribunal Practice Notice TPN 1/2000, the Trade Marks Registry will require all parties professionally represented at Substantive Hearings (and Preliminary Hearings) to submit a skeleton argument. These should be received at least 24 hours in advance of the Hearing. As set out in the practice direction published in every Trade Marks Journal, practitioners are reminded that, as with any correspondence in inter partes proceedings before the registrar, they should copy the skeleton argument to the other party at the same time.

This arrangement should ensure that submissions are confined to the areas and issues upon which the dispute is focussed and help ensure a more effective hearing and a more timely written decision. If skeleton arguments are not submitted (and the hearing is prolonged as a result) then this factor may be taken into account in the final determination of costs.

4. Current contact details for enquiries about this notice are:

Sally Howls

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

Tel: +44(0)1633 811035
Fax: +44(0)1633 811175

6 December 2000