Tribunal Practice Notice (TPN 2/2004)
New trade mark opposition and other inter partes procedures
On 5 May 2004 a number of new statutory instruments will come into force that will amend the Trade Marks Act 1994 (“the Act”), the Trade Marks Rules 2000 (“the Rules”) and other related orders and regulations. The most substantial changes affect the way in which the Trade Marks Registry handles opposition cases. This notice advises users how the new procedures should operate in practice.
1 Opposition procedures
1.1 Filing an opposition including making a "statement of use" - new rule 13
There is no change to the way in which an opposition is filed. Form TM7 is still required within the three month (non-extendable) period starting on the date the contested trade mark application is published in the Trade Marks Journal. Form TM7 has been amended (the new version should be used from 5 May 2004) so that the grounds of opposition now form part of the form. It has also been re-structured so that the information required to set out the opponent’s case can be simply inserted into the form. If an opponent wishes to amplify the information contained in the statement of grounds then additional pages may be used. Also, users may use their own word processed forms, but these must be in accordance with Rule 3(2) of the Rules.
The new rule 13 introduces a requirement for the opponent to provide a statement of use in respect of any earlier trade mark they seek to rely on under section 5(1), (2) or (3) of the Act, if it was registered before the start of the five year period ending on the date of publication of the contested trade mark application. The statement of use must detail the goods and services on which the trade mark has been used in the five year period ending with the date of publication. Only the statement is required, no evidence or examples of the trade mark in use are required at that stage. This requirement stems from the introduction of a proof of use regime into the opposition (and invalidation) procedure. The Act has been amended to permit such a regime, see new section 6A of the Act [introduced by way of Statutory Instrument No.946 – The Trade Marks (Proof of Use, etc.) Regulations 2004].
Users have suggested that they may have difficulties in making an accurate statement if they do not receive instructions to file the opposition until close to the end of the opposition period. The introduction of a proof of use regime means that oppositions should no longer be filed (in respect of earlier trade marks that have been registered for five years or more) on the basis of unused trade marks. Doing so could be viewed as acting in a vexatious manner. However, if you are aware that the earlier trade mark has been used but you are uncertain as to the accuracy of the statement you intend to make then a qualifying term, e.g. "to the best of my knowledge", may be used to accompany the statement of goods and services on which you believe the trade mark to have been used.
It should be noted that if the statement of use has no legitimate support in evidence then the registrar may consider a higher award of costs in view of the inconvenience that may have been caused to the other party; this will be so even if a qualifying term was used to accompany the original statement. It is therefore in the interests of users to ensure that any uncertainty they may have is quickly clarified and the pleadings amended if necessary.
When the opposition has been filed and accepted by the Trade Marks Registry, a copy will be sent to the applicant (the date on which this is done is “the notification date” see new Rule 13(5) of the rules as introduced by The Trade Marks (Amendment) Rules 2004) inviting them to file a counterstatement in order to defend the opposition.
1.2 Defending the opposition and cooling-off period - new rule 13A
There is little change to the manner in which the opposition is defended – Form TM8 is required within three months of the notification date. Form TM8 has been amended so that the counterstatement now forms part of the form. Also added has been a section in which the applicant should indicate whether they accept or deny (and put to proof) the opponent's statement of use (if one has been made).
If the parties wish to enter a cooling-off period then one of them must, within three months of the notification date, file Form TM9c. Such a request must be made with the agreement of the other party. Form TM9c may be filed electronically via the Patent Office website (www.patent.gov.uk). In these circumstances the applicant will be set a 12 month period commencing on the notification date in which to file their Form TM8. The Trade Marks Registry will not issue any further reminders of the date on which the Form TM8 should be filed.
The applicant can bring the cooling-off period to an end prior to the expiry of the twelve month period by filing their Form TM8. If the opponent wishes to bring the cooling-off period to an end prior to its expiry then they must file Form TM9t. The applicant will then be given a period of one month (from the date Form TM9t was filed) in order to file their Form TM8. The rules provide that the applicant will never be given less than a three month period from the notification date for filing their Form TM8.
The date upon which the Form TM8 is sent to the opponent by the Trade marks Registry will, unless the case is the subject of a preliminary indication, be known as “the initiation date” (see new Rule 13A(5) of the rules as introduced by of the Trade Marks (Amendment) Rules 2004).
1.3 Preliminary indication - new rule 13B
For any opposition that includes grounds under section 5(1) or (2) of the Act the Trade Marks Registry will give a preliminary indication (“PI”) of the likely outcome of those grounds of opposition. If the opposition contains no such grounds then the case will proceed directly to the evidence rounds. The PI will normally be given in a letter issued by a Principal Hearing Officer. It will be based upon the law, jurisprudence and the facts provided in the statement of use and the specification of the application for registration. The PI letter will be issued within four weeks of the initiation date. The date upon which such a letter is sent will be known as "the indication date" (see new Rule 13B(3) as introduced by the Trade Marks (Amendment) Rules 2004). The PI is not a decision and is therefore not subject to an appeal at this stage in the proceedings, it is an indication.
Following the issuing of a PI, the party to whom the PI is adverse will be allowed one month from the indication date in which to signal their intention to proceed to the evidence rounds. A Form TM53 must be used to signal such an intention (see new rules 13B(4)(a) and 13B(4)(c) of the rules as introduced by the Trade Marks (Amendment) Rules 2004).
There may be some cases where the PI results in some, but not all, of the goods or services being regarded as registrable – in these cases either party may, within one month of the indication date, file Form TM53 to proceed to the evidence rounds. In these circumstances, if neither party files a Form TM53 then the applicant will be allowed a further one month period in which to amend their application in line with the PI. If no such amendment is requested then the application will be deemed withdrawn in its entirety. (see new Rule 13B(4)(b) of the rules as introduced by the Trade Marks (Amendment) Rules 2004).
If a Form TM53 is filed, the date upon which it is copied by the Trade Marks Registry to all other parties will be known as "the initiation date" (see new Rule 13B(6) of the rules as introduced by the Trade Marks (Amendment) Rules 2004).
1.4 Evidence stage - new rule 13C
The pattern of the evidence rounds remains the same. Consequently, the first round of evidence is for the opponent and it must be filed within three months of the initiation date (either the date Form TM8 is filed or if a PI has been given the date upon which Form TM53 was filed). If the Trade Marks Registry decide not to provide a PI it will notify the parties to the proceedings and set the date for the opponent to file their evidence in chief. If the opponent files no evidence then, unless the registrar directs that the proceedings continue, the opposition will be deemed withdrawn. The registrar will, however, be prepared to make a direction, on request, that the proceedings continue so long as the grounds of opposition are solely (or are limited to) section 5(1) or (2) of the Act. The opponent will also have to confirm in writing that they will provide oral or written submissions at the end of the proceedings.
If the applicant has denied the opponent’s claim (if one has been made) to use of the earlier trade marks(s) and put them to proof then it is at this stage that evidence to support the statement must be filed. The evidence filed will not be substantively examined at this early stage by the Trade Marks Registry, this will take place at the conclusion of the proceedings. However, if at that early stage the evidence of use is challenged by the applicant, and it results in no evidence of use being shown, then the earlier trade mark can no longer be relied upon in the opposition and will be struck out. If no use is shown and this is the only earlier trade mark relied upon then this will result in the opposition as a whole being struck out.
It is recommended, although this is not a formal requirement, that evidence supporting the claim to proof of use is filed under a separate statement or declaration from any other evidence filed by the opponent. It will assist the Trade Marks Registry and the other party in clearly identifying what is claimed to be the evidence showing use. The applicant’s period to file evidence (and the opponent's period to file evidence in reply to the applicant's evidence) remains at three months each (subject to extensions of time).
The only other change to the evidence rounds is the introduction of a form with which all evidence in inter partes proceedings must be filed. Evidence will only be considered filed if it is accompanied by Form TM54 (no fee required). The form itself should be completed with a list of all the evidence filed under cover of the form. It should be noted that a form will be required for every batch of evidence and not per evidence round.
1.5 End of proceedings
At the end of the evidence stages the customary case review will be undertaken by the Hearing Officer with responsibility for determining the case who will indicate whether he/she considers that a hearing is necessary for a decision to be reached. The parties retain their right to be heard.
2 Invalidation procedures
As in opposition proceedings the invalidation procedure will include a proof of use regime. The relevant period in invalidation proceedings in which use must be shown is the five year period ending on the date of the application for the declaration of invalidity. Similarly the provisions will only apply to trade marks that were registered prior to the five year period ending on the date of the application for invalidity. The registered proprietor in filing their Form TM8 must, if a statement of use has been made, admit or deny (and put to proof) that statement of use. If put to proof, the applicant for invalidity must file this evidence in their first round of evidence.
3 Revocation on non-use grounds
The substantive changes to the provisions are:
3.1 The period of alleged non-use
The rules and Form TM26(N) have been amended to ensure that the application for revocation must show the specific periods in which it has been alleged that the trade mark in question has not been used. Evidence of use filed by the registered proprietor with his initial defence must cover, unless the registered proprietor is relying on resumption of use, the period of non-use that has been alleged.
3.2 The period for filing a defence cannot be extended
Whilst the unamended rule 68 clearly identified that the period for filing the proprietor’s Form TM8 and counterstatement would not be extended beyond the permitted maximum of three months, it was not so clear that the requirement to file their initial evidence of use was similarly non-extendable. Rule 68 has therefore been clarified to ensure that users are aware that the period is non-extendable in relation to all the documents required from the proprietor to establish their initial defence.
3.3 The onus on the applicant to file evidence
Under the unamended rules the applicant was set a period in which to file evidence in support of the application with the sanction that their application would be treated as abandoned if they did not. Although the registrar was permitted, as an exercise of discretion, to allow the proceedings to continue absent evidence this still placed a burden on the applicant. Given that the onus in non-use revocation is clearly on the proprietor (see section 100 of the Act) the rules have been amended so that if the applicant files no evidence then the case will automatically proceed, following notification from the Trade Marks Registry, to the next evidence round.
4 Costs in inter partes proceedings
Costs in inter partes proceedings will continue to be assessed with reference to the scale of costs used in the Trade Marks Registry. The registrar will continue, in line with current practice, to hear submissions requesting an uplift in costs if the manner in which a case has been prosecuted has led to unnecessary and additional cost being incurred by the other party to the dispute.
5 Appeal procedures
There are two changes in relation to the procedures for appealing to the Appointed Person. The first is the introduction of a form (Form TM55) with which an appeal to the Appointed Person should be filed. The form includes within it a space for the grounds of appeal – no separate document is therefore required.
The only other change is an amendment to the rules that permits the Appointed Person to decide the appeal from the papers filed. A decision without recourse to a hearing will only be issued if all the parties to the appeal notify the Appointed Person that they do not wish to make oral submissions at a hearing. The parties will be able to make written submissions which the Appointed Person will take into account when reaching their decision.
6 Transitional arrangements
The examples below relate to transitional provisions in opposition proceedings. Similar provisions apply to invalidity proceedings.
The basic premise is that all proceedings that are live prior to the coming into force (on 5 May 2004) of the amended rules will transfer to the amended rules normally when a next step is to be taken in the procedure. The following information is provided to assist users:
6.1 TM7 has been filed prior to 5 May 2004 but no TM8 filed before 5 May 2004
These cases will either be in the three month period for the defence to be filed or will be in the cooling-off period provided under the unamended rules. They will transfer to the new rules only when the Form TM8 is filed. They will therefore be unable to take advantage of the longer cooling-off period prescribed by the amended rules.
As the procedure will be operated under the amended rules when Form TM8 is filed the case will be the subject of a preliminary indication (if section 5(1) or (2) has been pleaded), but as the proof of use regulations were not in existence prior to 5 May 2004 there is no vires to require proof of use in any proceedings launched prior to 5 May 2004.
6.2 TM7 and TM8 filed before 5 May 2004
These cases will already be in an evidence round, or on cases where a TM8 or evidence was filed before 5 May 2004 the registrar is in the process of setting an evidence round. In these circumstances the evidence to be filed under an already triggered period should be filed in accordance with the unamended rule, e.g. the evidence need not be accompanied by Form TM54. Similarly, any evidence round about to be triggered will be set with reference to the unamended rules and should be filed accordingly. When the subject evidence is filed, the next round of evidence will be set in accordance with the amended rules.
These cases will not, for reasons given above, be the subject of the proof of use regime. Furthermore, because Form TM8 was filed prior to 5 May 2004 the case will not be the subject of a preliminary indication and will proceed directly to the evidence rounds.
6.3 Some examples:
TM7 filed 17 March 2004 but no TM8 filed prior to 5 May 2004 - case will transfer to amended rules only when TM8 filed and will be the subject of a preliminary indication but no proof of use.
TM8 filed 4 May 2004 - the first round of evidence under the unamended rules has been triggered so the opponent’s evidence round will be set (and required to be filed) under the unamended rules. When the opponent's evidence is filed, the case will transfer to the new rules and the applicant’s evidence set in accordance.
Opponent's first round of evidence was set before 5 May 2004 and filed on 5 May 2004 - the evidence should be filed in accordance with the unamended rules, the case will now transfer to the new rules and the applicant’s round of evidence set in accordance.
Please address any enquiries about this notice to:
Raoul Colombo
Head of
Law Section
Trade Marks Directorate
Room 2G32
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom
Tel:
+44 (0)1633 811407
Fax: +44 (0)1633 811175