Intellectual Property Office
1.1 Purpose of this chapter of the work manual
The purpose of this chapter of the manual is to outline procedures and give guidance on inter partes proceedings by:
- clearly defining the different types of proceedings
- indicating the sections of the Trade Marks Act 1994 (the Act) and the TradeMarks Rules 2008 (the Rules) which regulate each aspect of inter partes proceedings
- setting out the requirements for the filing of documents, pleadings and evidence
- detailing the practice of the Trade Marks Registrys Tribunal Section
- detailing the activities of the Trade Marks Registry as a Tribunal
- setting out the avenues for appeal against decisions by the Trade Marks Tribunal
1.2 Decisions of other Courts and Tribunals
The management and decisions of Tribunal actions under the Act must take account of guidance laid down or endorsed by appellate bodies and other Courts.
The Trade Marks Act 1994 is largely derived from EU law (Directive 2015/2436). In relation to the interpretation of such retained law, the case law of the Court of Justice of the European Union (including the General Court) issued before the end of the transition period continues to apply, and is binding, as retained EU case law under section 6 of the Withdrawal Act. Furthermore, although not binding, regard can still be had to judgments made by the EU Court after the end of the transition period. However, the power to diverge from retained EU case-law has been vested in the Supreme Court, the High Court of Justiciary in Scotland, and various appeal courts, including the Court of Appeal, whose decisions are binding on the tribunal.
UK Courts
These decisions are binding on the Tribunal.
Appointed Person (AP)
Decisions are not binding on the Tribunal other than in the case being dealt with. However, they are of persuasive value in considering similar cases. These decisions are published on the Office website under Hearings (Results of past decisions). Appointed Persons are experienced intellectual property law practitioners who are appointed by the Lord Chancellor. A decision of the Tribunal may be appealed to the Appointed Person (see section 7) but is not subject to further appeal.
1.3 Decisions of Tribunals/Courts outside the UK
With the exception of judgments of the EU Court (see above), decisions of other national courts/tribunals are not binding on the Registrar, nor are they usually of particular persuasive value. Decisions of national tribunals/courts within the EU may be of persuasive value in determining the meaning of the EU (Directive) derived domestic legislation but they are similarly not binding. Even when the UK was a Member State of the EU, Laddie J. held in Wagamama [1996] FSR 716 that:
It would not be right for an English Court, if it is firmly of a different view, to follow the route adopted by the courts of another Member State simply because the other courts expressed a view first. The scope of European legislation is too important to be decided on a first past the post basis.
1.4 Decisions of Tribunals/Courts in other Member States
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1.5 Accessing decisions
Decisions in earlier cases are available from several sources:
British Library (BLs) - all decisions of the Tribunals Hearing Officers and the Appointed Persons are first published for dissemination through the British Library. Subsequently, and if they are of particular interest or importance, they may be republished in other legal reports such as RPCs, FSRs or ETMRs Decisions are available from the IPO website.
Reports of Patent, Design and Trade Mark Cases (RPCs) - these normally include reports of appeals to the courts and sometimes to the Appointed Person. They may also include decisions of the Tribunal where the decision contains statements of practice and interpretation of the law.
European Trade Mark Reports (ETMRs) - these contain reports from around the European Union (EU) by examination offices, tribunals & courts which bear upon the interpretation of the European Community Directive underlying all EU national and supranational trade mark law (and thus EU-derived domestic legislation).
Fleet Street Reports (FSRs) - these also contain reports of intellectual property cases of interest and are published by Sweet and Maxwell.
1.6 Practice guidance
In addition to case law the Tribunal publishes the following practice guidelines:
Tribunal Practice Notices (TPNs) these provide guidance for practitioners on how the Registrar is regulating tribunal activities and are incorporated within this chapter.
Law Practice Directions (LPDs)/Patent Directorate Notices (PDN) - LPDs and/or PDNs are published on the Intellectual Property Office website to notify practitioners and the public of any changes to, or clarification of, internal guidelines.
1.7 The role of the Tribunal and its inherent power to regulate procedures
The inherent jurisdictions of the Tribunal to act in inter partes matters are defined in Pharmedica ( (2000) RPC 536, page 541), when Pumfrey J stated:
Notwithstanding the fact that the Registrar is, like the County Court, a tribunal which is established by statute, I have no doubt that the Registrar has the power to regulate the procedure before her in such a way that she neither creates a substantial jurisdiction where none existed, nor exercises that power in a manner inconsistent with the express provisions conferring jurisdiction upon her.
In inter partes proceedings the Tribunal is acting in a quasi-judicial capacity. Those who represent it must remain impartial at all times and are therefore unable to advise litigants on the strength or weakness of their cases. The Tribunal can help on matters of procedure but not substance. This was made clear by the Appointed Person in the ADRENALINE case BL O/440/99 in which it was held that it is not for those arbitrating these disputes to become involved in debate:
10) Accordingly, in relation to opposition and revocation proceedings, the Registrars officers cease to perform an administrative function and act solely in a judicial (or quasi judicial) capacity. The distinction is I believe an important one, particularly in the circumstances of the present case. When acting in an administrative capacity, the Registrar has to enter the debate with the applicant, has to reason with him and necessarily will engage in correspondence or in conversations with the applicant in order to seek to resolve any matters arising. If this can be done to the applicants satisfaction, there is no need for a hearing.
11) Once the Registrar begins to perform his judicial function, the position is different. The Registrar or his officer is acting as a judge. The proceedings are adversarial, the issues are circumscribed by the pleadings and the parties are free to adduce the evidence and the arguments that they wish. It is the Registrars duty to adjudicate upon the issues raised. It is not his duty and, indeed, it would be wrong for him, when exercising this function, to enter into a debate with either party as to the validity or otherwise of the contentions put forward on any of the issues raised in the proceedings.
In correspondence, initial views may be expressed by the Tribunal on the basis of what the parties have said up to a particular point. An example would be in relation to a request for an extension of time. It must be stressed that an initial view does not represent a final determination of the matter, which may come after a hearing or written submission.
1.7.1 Litigants in person
As stated at paragraph 1.7above, the Tribunal must remain impartial at all times and are therefore unable to advise litigants. In Barton v Wright Hassall [2018] UKSC 12 Lord Sumpton stated:
Their [i.e. LIPs] lack of representation will often justify making allowances in case management decisions and in conducting hearings. But it will not usually justify applying to litigants in person a lower standard of compliance with rules or orders of the court. The overriding objective requires the courts so far as practicable to enforce compliance with the rules: CPR 1.1(1)(f). The rules do not in any relevant respect distinguish between represented and unrepresented parties [] The rules provide a framework within which to balance the interests of both sides. That balance is inevitably disturbed if an unrepresented litigant is entitled to greater indulgence in complying with them than his represented opponent. Any disadvantage enjoyed by a litigant in person imposes a corresponding disadvantage on the other side [] Unless the rules and practice directions are particularly inaccessible or obscure, it is reasonable to expect a litigant in person to familiarise himself with the rules which apply to any step which he is about to take.
Also, in EDF Energy Customers Ltd v Re-Energized Ltd [2018] EWHC 652 (Ch), HHJ Matthews summarised a number of earlier decisions relating to how a court should deal with liti