Tribunal Practice Notice (TPN 3/2004)
Treatment of decision pending earlier trade marks under Sections 5(1) & 5(2) in Opposition and Invalidation proceedings
Existing Practice
In cases where the outcome of proceedings is dependant on earlier trade mark(s) which are pending before either the United Kingdom Trade Marks Registry or OHIM, the Registrar often deals with the proceedings and issues a provisional decision and, subject to successful registration of the earlier trade mark(s), confirms the position in a supplementary decision. An example of this approach was adopted in Opposition proceedings No 80461, with the Hearing Officer commenting in the following terms:
"157. Subject to successful registration in respect of relevant goods and/or services easyGroup have succeeded on the basis of their easyHotel/EASYHOTEL trade marks. In the absence of these trade marks the opposition would have failed. Consequently a final decision cannot be given in relation to these proceedings until the two easyHotel/EASYHotel applications are finally determined.
158. I direct that easyGroup advise me within one month of the final determination of United Kingdom application No. 2246286 and Community Trade Mark application No. 1866706 of the outcomes of the applications. On receipt of this information a supplementary decision will be issued giving a full determination of the opposition proceedings and making an award of costs."
Upon registration of one of the earlier trade marks, the Hearing Officer confirmed his decision. He said:
"1. On 22 November 2002 I issued a provisional decision in relation to this opposition. The decision was provisional as the final outcome depended upon the registration of trade mark applications. One of those applications has now been registered; United Kingdom trade mark registration no 2246286 of the trade marks (a series of two)…."
Practice with effect from 1 July 2004
The Trade Marks Registry has reviewed this approach not only in light of its impact on time periods for appeal, but also to ensure greater fairness to the parties. Having done so, the Trade Marks Registry will, from 1 July 2004, standardise its practice. Instead of issuing provisional and supplementary decisions on the basis indicated above, the Hearing Officer will, during their review of the proceedings, (paragraph (a) of Tribunal Practice Notice 5/2000 refers) consider whether the allegations are based upon pending earlier trade mark(s) which are likely to lead to the refusal/cancellation of the application/registration. In such circumstances, the Hearing Officer is likely to suggest that the proceedings are suspended to await the outcome of the pending earlier trade mark(s). The parties will of course retain their right to comment on such an approach. The Hearing Officer may allow the proceedings to continue to either a substantive hearing or a decision from the papers, if they consider it appropriate.
Please address any enquiries about this notice to:
Chris Bowen
The
Trade Marks Registry
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom
Tel:
+44 (0)1633 811009
Fax: +44 (0)1633 814122