Tribunal Practice Notice (3/2011)
Requirement to attend hearings in relation to applications for invalidation on relative grounds.
This TPN updates TPN (6/2009)
TPN (6/2009) set out a ‘blanket’ case management direction under rule 62 (2) of the Trade Marks Rules 2008 whereby all decisions in relation to an invalidation action based on sections 5(1), 5(2), 5(3) and 5(4) were to be made following a hearing.
The rationale for this was based on the decision in William Evans and Susan Mary Evans (a partnership trading together as Firecraft) v Focal Point Fires Plc [2009] EWHC 2784, where it was held that an invalidation action before the registrar may give rise to res judicata and that, consequently, re-litigation between the parties could constitute an abuse of process. This highlighted the significant consequences which could arise from invalidation actions before the registrar.
The position set out in TPN (6/2009) contrasts with the position in an opposition, where, following review, a hearing is offered to the parties where, for example, it may help clarify the issues.
Plainly however, a balance has to be struck as between the significant consequences of an application for invalidation before the registrar and the potential burden of a ‘mandatory’ hearing, requiring attendance in every case of invalidation on relative grounds.
Having reviewed this balance since the publication of this TPN, the registrar does not consider that a mandatory hearing in every such invalidation case is necessary or even beneficial. The registrar will, accordingly, review each invalidation action based on relative grounds, and either direct attendance at a hearing under rule 62(2), or alternatively, suggest instead that a decision be taken from the papers only. In the latter case, the parties will nevertheless retain their right to be heard if they wish.
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
Date Published: 17 October 2011