Tribunal Practice Notice (TPN 1/2009)

Requests for stays or suspensions in inter partes proceedings

The Registrar is concerned that an increasing number of requests to stay or suspend proceedings are being made by parties who fail to follow the practice guidance set out in TPN (6/2004).

This Tribunal Practice Notice reminds practitioners of the procedure that parties must adhere to when submitting a request to the Tribunal to stay or suspend the proceedings.

Policy

The Registrar does not intend to force parties into the filing of evidence where parties can ultimately reach a negotiated settlement. Nevertheless, the Registrar has an overriding objective to ensure that all proceedings are completed within a reasonable time and avoiding unnecessary expense. There is a clear public interest that third parties should have certainty as to the outcome of opposition proceedings and applications for revocation and invalidation.

Stay or suspension requested for settlement negotiations

Where a stay or suspension is requested on the basis that the parties are trying to negotiate an amicable settlement, the parties will need to show in the period prior to the request what they have done in their negotiations. Consequently, it will be expected that dates of actions that they have taken and the nature of those actions will be included in the statement. The statement will not need to go into confidential and without prejudice details but it will need to show that there has been serious and continuing work towards a settlement going on prior to the request. As well as listing communications between the representatives it should also show communications with the clients, where these have taken place. A list of actions might be something like this:

• 3 September 2008
  letter to representative of x re settlement conditions
• 13 September 2008
  letter from representative of y
• 13 September 2008
  letter to client re proposal from y

The parties will also need to make a statement of the progress to date and an indication as to whether outstanding issues are merely minor issues of clarification or whether they represent potentially significant barriers to a resolution of the matter. The parties will be expected to state realistically and clearly when they expect the negotiations to be completed and the proceedings concluded.

As under the new Trade Mark Rules 2008 the cooling off period has now been extended to a maximum period of 18 months, the Registrar will take a stronger and more critical examination of the reasons supporting a request to stay the proceedings received immediately following the ending of a 18 month cooling off period. In addition to the usual requirements outlined above, any request by the parties to stay the proceedings will have to show that settlement negotiations are at an advanced stage with a draft settlement agreement before the parties.

If the request for a stay or suspension follows immediately after a counterstatement has been received and where there has been no cooling off period, it is possible that all the parties will have been able to achieve is an agreement to start negotiations. In such cases the Registrar will look sympathetically at the first request to stay the proceedings. However, repeat requests will be looked at more critically and the Registrar will need to be reassured that real progress is being made towards a negotiated settlement.

Contact for enquiries

Raoul Colombo

Room 2.G52
Trade Marks Tribunal Section
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom