Tribunal Practice Notice (TPN 1/2002)
Trade Mark Hearings
Following the publication of the Report by Sir Andrew Leggatt and his review of Tribunals, the Trade Marks Registry has been looking at its procedures in the light of Sir Andrew's restatement that "Tribunals are intended to provide a simple, accessible system of justice where users can represent themselves".
Work is in hand to review the procedures for inter partes proceedings before the Registrar with the aim of bringing forward proposals to change the way in which the system works so that the rules better reflect the needs of users, for example, to provide a simple and quick arrangement for determining opposition disputes where appropriate. This will mean substantive changes to the Trade Marks Rules and outline proposals will be put forward to the interests, and through the Patent Office Internet site to all individuals who might have a view on the way in which inter partes procedures might be changed. In addition, the Trade Marks Registry has reviewed the way in which the Hearing system works and the way in which Hearings are conducted; this paper is confined to the arrangements for Hearings.
Insofar as the way in which the Hearing system works, we have begun a trial on an electronic booking system for inter partes Hearings (preliminary and substantive). This means that parties who want to be heard and whose cases are at that stage of the proceedings will be able to fix the date themselves (within limits!) rather than have the Trade Marks Registry allocate the date. We will review the results of the trial with users in due course. Plans to develop a parallel system for ex parte Hearings will be considered soon.
The conduct of Hearings themselves is also an area which has been reviewed. Whilst recognising that the law and practice surrounding trade marks can be complex, the Trade Marks Registry considers that there are a number of things which can be done to make them more in tune with the simple accessible operation Sir Andrew Leggatt's Report points to.
Ex Parte Hearings
In relation to applications for registration, Hearings have over the years become far less formal and have developed into a discussion between the Registrar's Hearing Officer and the applicant or their representative about the objections taken to the application and, where appropriate, consideration of how they might be overcome. No change will be made to those Hearings. They will continue to be held principally in London and Newport, but also in other regional locations on demand, and over the video conference facility and telephone as appropriate. The essence will be simple straightforward arrangements without formality in which all involved feel comfortable and not overawed by the surroundings.
Other ex parte Hearings ie in relation to the restoration of a trade mark to the register, will be treated in the same way. The aim will be for the lay litigant or represented parties and their representatives to be able, in an informal atmosphere, to put forward their points and answer questions put by the Hearing Officer.
Where Counsel have been engaged to make submissions on behalf of an applicant for registration then, usually, there are complex arguments to be considered and a need for the Hearing Officer to have a record of the submissions in order that a considered decision might be given. In those circumstances a shorthand writer will normally be engaged but they should not be intrusive in terms of the informality of the hearing.
Only where the case is complex or Counsel have been engaged to handle matters will a shorthand writer be present. By reinforcing the informality of the present arrangement the Trade Marks Registry considers that the conduct of ex parte Hearings will be more in tune with modern Tribunal arrangements. Also, and significantly, it will mean that costs to those involved in proceedings before the Office will be kept down.
Inter Partes Hearings on Preliminary Matters - Case Management Conferences
For the convenience of all concerned, the Trade Marks Registry will continue to hold Hearings sought in relation to extension of time matters using the video conference facility or telephone conference facility. Similar arrangements will apply to Case Management Conferences. Though in neither case will Hearings in person be ruled out, either where the parties or the Hearing Officer request it. All other Hearings will normally be held on a face-to-face basis and usually in London. The informal arrangement with the parties sitting around a conference table, the Hearing Officer at the head, will continue. The arrangement whereby the Hearing Officer is either in the room when the parties are shown in or joins the parties, without any formal announcement, will similarly remain.
Inter Partes Main Hearings
This is the area in which the Trade Marks Registry proposes to make the most significant changes.
The Registrar of Trade Marks is a Tribunal and not a Court. It should not therefore seek to emulate the latter, but seek to provide 'a simple, accessible system of justice where users can represent themselves'. The Trade Marks Registry intends therefore to remove references to 'Court Room' both as the location of the Hearing (Tribunal Room is the term that will be used) and as a concept in terms of the procedures adopted.
Further, no other Tribunal, as far as can be ascertained, operates, as the Court does, in announcing the Hearing Officer and expecting the parties to stand as he/she enters the room. The Trade Marks Registry does not consider that such a practice is helpful to either side and is not conducive to putting private litigants at ease; it does not enhance the respect with which the Tribunal or its decisions are held and it does not enable the Hearing Officer to better control the Hearing. Therefore the practice of announcing the presence of the Hearing Officer will be discontinued. The Hearing Officer will either be present in the Tribunal Room when the parties are shown in or will join them when they have settled themselves into their seats. The parties will not be expected or required to acknowledge his/her arrival, other than from a seated position.
The Hearing Officers in The Trade Marks Registry have sufficient training in the application of Tribunal practice skills to be able to conduct the Hearing, control the parties and 'hold the ring' such that the parties can make their submissions without the need for the current formality. This less formal approach may positively assist litigants in person or indeed the less formal approach adopted by Trade Mark Attorneys who, used to the ex parte arrangements, have recently come to represent clients before the Trade Marks Registry.
These proposals do not affect the structure of the Hearing. As outlined in paragraph 43 of TPN 1/2000 (Practice in Proceedings before the Comptroller) opening submissions will be by the party bearing the initial burden of proof eg the opponent, or applicant for revocation, who will continue to have the right of reply to the submissions of the other party.
In addressing the Hearing Officer parties may use either his or her normal address eg Mr X or Mrs X but Sir/Madam will be acceptable.
These proposals will come into effect from 1 June 2002.
Current contact details for enquiries about this notice are:
Sally Howls
Trade Marks Directorate
Room
2G31
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom
Tel:
+44 (0)1633 811035
Fax: +44 (0)1633 811175