Tribunal Practice Notice (TPN 1/2003): Revised
Appeals to the Court from the Comptroller
This notice, as originally published on 12 March 2003, was incorrect as regards the period for appeal from the Comptroller (including for this purpose the registrar of trade marks and designs). By virtue of Practice Direction 52, which supplements Part 52 of the Civil Procedure Rules, such an appeal constitutes a statutory appeal. It follows that the period for appeal is 28 days, with no discretion for the Comptroller to direct a different period.
A revised version of the notice (omitting the transitional provisions which are no longer necessary) follows. We regret any inconvenience which has been caused.
Introduction
1.
The Civil Procedure (Amendment No 2) Rules 2002 (SI No 2002/3219) entered into force on 1 April 2003.
These Rules provide a new Part 63 of the Civil Procedure Rules 1998 governing intellectual property
proceedings, entitled "Patents and Other Intellectual Property Claims". Part 63, together
with a supplementary Practice Direction, supersedes Practice Direction 49E. The SI, Part 63 and the
Practice Direction are available from The Stationery Office. They are also published on the Ministry
of Justice website 
.
2. The specific provisions for patent and trade mark appeals in sections 16 and 23 respectively of Practice Direction 49E therefore no longer apply. By virtue of new rule 63.17, all appeals to the court from the comptroller are governed by Part 52 of the Civil Procedure Rules and (see rules 52.1(4) and 52.2) its supplementary Practice Direction 52. Patent appeals (which include supplementary protection certificate appeals by virtue of rule 63.1(2)(e)) are to be made to the Patents Court, and other appeals to the Chancery Division. Any document required by Part 52 to be served must also be served on the comptroller. (References to the comptroller in this Notice include the registrar of trade marks and registered designs.)
3. These changes affect the procedure for appeals as regards:
- the period to file the notice of appeal at the court;
- extension of that period; and
- the nature of the appeal.
4. The new Rules apply only to the courts in England and Wales. They do not apply to appeals to the Appointed Person and to the Registered Designs Appeal Tribunal. The position concerning these appeals is explained at paragraphs 11 and 12 below.
Period for appeal: Practice Direction 52 paragraph 17.3
5. Since an appeal from the comptroller constitutes a statutory appeal within the meaning of paragraph 17.1 of Practice Direction 52, then in accordance with paragraph 17.3 notice of appeal must be filed at the court within 28 days after the date of the comptroller's decision. There is no discretion for the comptroller to direct a different period.
6. For trade mark appeals a period of 28 days already applied by virtue of section 23.3 of Practice Direction 49E. However, the period prescribed by section 16.3 for patent appeals (14 days for matters of procedure and six weeks in other cases) is abolished, with the consequence that it is no longer necessary in patent proceedings for the hearing officer to determine whether the decision relates to a matter of procedure.
7. In accordance with rules 52.4(3) and 63.17(3) and paragraph 17.5 of Practice Direction 52, the appeal notice must be served on each respondent and on the comptroller as soon as practicable and in any event not later than 7 days after it is filed. The period of 21 days prescribed by sections 16.8 and 23.4 of Practice Direction 49E is abolished.
Extension of the appeal period: CPR rule 52.6
8. In accordance with rule 52.6(1) and paragraphs 5.2 and 5.3 of Practice Direction 52, any application to extend the period for appeal must be made to the court. The parties cannot extend the period by agreement (rule 52.6(2)). Further, it is no longer possible for the comptroller to extend the period at the request of a party, as was previously possible under sections 16.5 and 23.8 of Practice Direction 49E.
9. An appellant who applies for an extension from the court must state the reasons for the delay and the steps taken prior to the application being made. The respondent has a right to be heard on the application.
The nature of the appeal: CPR rule 52.11
10. In general, in accordance with rule 52.11 (which already governed trade mark appeals to the court in the absence of specific provision in Practice Direction 49E), the appeal will be limited to a review of the comptroller's decision. The practice of the courts under rule 52.11 is explained in the commentary in "Civil Procedure". Section 16.15 of Practice Direction 49E, whereby patents appeals were by way of a rehearing rather than a review (although further evidence was prohibited on appeal except with the leave of the court) will no longer apply.
Appeals to the Appointed Person and the Registered Designs Appeal Tribunal
Appointed Person
11. The period for appeal to the Appointed Person is 28 days under the Trade Marks Rules and the comptroller has sole jurisdiction to extend this period. In relation to the nature of the appeal, the Appointed Person is not bound by the Civil Procedure Rules but is generally guided by the court's approach to the distinction between review and rehearing.
Registered Designs Appeal Tribunal
12. The Registered Designs Appeal Tribunal Rules 1950 (as amended 1970) govern appeals to the Tribunal under section 28 of the Registered Designs Act 1949 (as amended by the Copyright, Designs and Patents Act 1988) and section 249 of the 1988 Act. Under these Rules the period for appeal is 14 days for a decision on a matter of procedure and six weeks for other decisions, and the comptroller may extend the period upon request made prior to its expiry.
Enquiries
13. Current contact details for enquiries about this notice are:
Patents and design right appeals
Richard Kennell
Patents
Directorate
Room GB09
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom
Tel:
+44 (0)1633 814330
Fax: +44 (0)1633 814491
Trade mark and registered design appeals
Raoul Colombo
Trade
Marks Directorate
Room 2G52
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom
Tel:
+44 (0)1633 811407
Fax: +44
(0)1633
811175
6 August 2003