Tribunal Practice Notice (2/2011)

Case management of inter partes proceedings: efficient, fair and less costly resolution of disputes before the Trade Marks Tribunal

1. There is a public interest in resolving disputes before the Tribunal efficiently and within a predictable timescale. Swift and effective determination of cases not only creates certainty for third parties but reduces the burden of litigation and the accompanying costs for the parties involved. Furthermore, drawn-out proceedings which become unnecessarily complicated or sidetracked affect the resources which the Tribunal is able fairly to allocate to other users. The Trade Mark Rules 2008 empower the Tribunal(1) to give case management directions (rule 62). This Tribunal Practice Notice (TPN) sets out the Tribunal's approach to case management of disputes in order to:

  • Deal with cases promptly, efficiently and fairly
  • Deal with cases in ways which are proportionate to the complexity of the issues
  • Give cases an appropriate share of the Tribunal's resources
  • Save expense

Time periods

2. Following the filing of a defence, the Tribunal sets and notifies the parties of the timetable for filing evidence and/or submissions (as per the periods set out in TPN 2/2010). The timetable is to be adhered to. It provides more than enough time, in the vast majority of cases, for facts or submissions pertinent to the pleaded grounds to be gathered and presented to the Tribunal. Parties should not regard this timetable as a 'starter for ten', to be varied at a later date. The Tribunal will, in exceptional cases, consider requests to extend the time allowance. Such requests will need to be fully supported with explanations as to not only what has been done to date but, more particularly, what is left to do and how long it will take to produce the evidence. The Tribunal will also need to be satisfied that the extra time is warranted in the context of the pleaded grounds and what is necessary to determine the case efficiently and fairly.

3. Further, the Tribunal will use its discretion to set time periods as it sees necessary, which may be less than the further time which the party has requested. Parties should particularly note that, if they have specified a time when the evidence will be ready and been allowed that further period of time, the Tribunal will look unfavourably upon further extension requests.

Case Management Conferences

4. Procedural disagreements arising during the evidential time periods or later will be dealt with by a Hearing Officer, usually at a case management conference (CMC). The Hearing Officer conducting the CMC will usually be the person responsible for making the final decision on the case. The disagreement may be between the parties or between the Tribunal and the party/parties following a preliminary view on a procedural issue (e.g. confidentiality, time periods, suspension, cross-examination), or a CMC may be called by the Hearing Officer in order to ensure the proceedings remain on track (rule 62(4)).

5. Hearing Officers will use their wide case management powers to make appropriate directions to the parties covering all aspects of the future management of the case in order to meet the objectives set out in paragraph 1 of this TPN. For example, it is currently not uncommon for parties pleading a section 5(2)(b)(2) ground to rely upon several earlier marks, including a mark which is subject to proof of use for a narrower specification of goods and services than another earlier registration of the same mark for a wider specification, but which is not subject to proof of use. In such a case, the hearing officer may refuse further time to file evidence of genuine use because it will not assist the determination of the case, instead only adding unnecessary time and cost to the proceedings, and ultimately cost for the parties concerned (rule 62(2)). Similarly, rule 62(h) allows for part of any proceedings to be dealt with as separate proceedings. For example, a case may be potentially resolved by a relatively simply pleaded section 5(2) ground rather than by a contentious bad faith ground (section 3(6)) with attendant complicated evidential issues. In such a scenario, the Hearing Officer may direct that the proceedings be separated so that evidence on the 3(6) ground will only be necessary if the case cannot be resolved via the simpler 5(2) ground.

6. CMCs will take place promptly. When a CMC is arranged, the Tribunal will notify the parties of the date and time when it will take place, giving 14 days notice. If within 5 days of the date of the notice either of the parties provides the Hearings Clerk with exceptional reasons as to why it cannot make, or make arrangements to be represented at, the date/time in question then another date/time may be appointed for the CMC, which will be within 7 days of the first date. No one will be permitted to reject two dates/times. Skeleton arguments are not required, but the parties should be prepared to deal with all matters relevant to the future management of the case. A CMC will normally take place via teleconference. These arrangements will also apply to procedural hearings on issues which have not yet reached the evidence rounds, such as the admissibility of pleadings.

Stay requests

7. Rules 18(4) and (5) allow parties to enter a cooling-off period to attempt to resolve their dispute by negotiation. The period of time is generous, particularly if the option to extend the initial cooling-off period is used. The Rules expressly limit the length of the cooling-off period to a maximum of 18 months. Staying proceedings for further negotiations at the end of the cooling-off period effectively circumvents the maximum period allowed for cooling off. Consequently, once parties have exited cooling-off and the proceedings have been joined (by the filing of the defence), the Tribunal will not permit an immediate stay of proceedings for further negotiations unless a) the parties can state a date, within the next month or so, by which time agreement is expected or b) the parties have agreed to mediation. Where following the cooling off period proceedings are stayed until a date provided by the parties (as in a) above), the Tribunal will look unfavourably upon further stay requests. A stay request for further negotiations made after the parties have seen each other’s evidence will be at the discretion of the Hearing Officer responsible for the case and may form the subject of a CMC. TPN 1/2009 outlines the requirements incumbent on parties requesting a stay of proceedings

Correspondence and telephone calls

8. Disputes before the Tribunal are inter partes, which means that the Tribunal is acting as an impartial adjudicating body between two (or more) parties who are in dispute. To ensure fairness and transparency of proceedings, it is imperative that each party sends a copy to the other party of all correspondence sent to the Tribunal, however seemingly trivial in nature, and indicates that a copy has been sent to the other side in its communication. Failure to indicate copying and failure to copy has a detrimental effect on the resources of the Tribunal and its ability to allot resources to other users fairly. Copying of correspondence also applies to statutory forms. In particular, failure to copy requests for extensions of time can create unnecessary complications if time is granted and the other side has hitherto been unaware of the request. Similarly, failure to copy evidence to the other side, which is a requirement of rule 64(6)(b), results in the evidence not being considered as filed. If parties persistently fail to copy correspondence and documents to the other side, this will be regarded as unreasonable behaviour and there will be cost implications at the conclusion of the proceedings.

9. An increasing proportion of litigants using the Tribunal are not represented by legal professionals. Whilst the Tribunal provides information on its procedures on the Intellectual Property Office's website, the Tribunal also recognises that unfamiliar legal territory sometimes gives rise to questions over the telephone. It is the Tribunal's intention to provide clearer information about commonly asked questions on the IPO website. We will expect users to look at this before asking for information. Tribunal officers will give reasonable information about procedures and clarification of directions, but all parties using the Tribunal have a duty to respect its inter partes nature. This means that the Tribunal will not enter into telephone debates or give further reasons for a preliminary view (for example on extension of time requests) to just one party over the telephone. Such calls will be terminated because the other side is not party to the discussion. If a party disagrees with either the other side's view or the Tribunal's view on a particular procedural issue, then it must put its comments in writing (either by letter or email), copied to the other side. Both for reasons of fairness and efficient use of the Tribunal's resources, its officers will terminate telephone calls when their nature ceases to be appropriate, whether that is because of the content or the length of time the call is taking.

Preliminary views

10. Parties should also note that, in relation to procedural issues that come before it, the Tribunal will not usually ask the other side for comments before it issues its preliminary view in writing; the Tribunal's preliminary view will become final unless a party objects to it and provides written reasons for doing so (again copied to the other side). If that happens a CMC or a procedural hearing will usually be appointed.

Use of e-mail

11. There has been an increase in the amount of correspondence which reaches the Tribunal via email. The Tribunal has no objection to the use of email communication, provided it is copied to the other side, but the Tribunal will answer email correspondence within the normal timescales relating to conventionally posted correspondence. Emailed correspondence will not be answered out of turn merely because it has been electronically mailed.

Allan James
Head of the Trade Mark Tribunal

Contact for initial enquiries

Raoul Colombo
Room 2.G52
Trade Marks Tribunal Section

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

(1) References in this TPN to 'Tribunal' should be taken to cover the Registrar, Hearing Officers and the Tribunal's officers.

(2) Of the Trade Marks Act 1994