Tribunal Practice Notice (TPN 5/2004)
Evidence in inter partes proceedings before the Registrar of Trade Marks: submission and argument
Cross & Tapper defines the purposes and categories of judicial evidence:
"Judicial evidence is used to prove either facts in issue, or facts from which facts in issue may properly be inferred. It comprises the testimony of witnesses, documents and things …. The main facts in issue are all those facts which the plaintiff in a civil action …. must prove in order to succeed, together with any further facts that the defendant or accused must prove in order to establish a defence."
Evidence is therefore the means by which any matter of fact, the truth of which is submitted in pleadings, is proved.
Before the registrar, in inter partes proceedings, there continues to be a practice of combining factual statements and submissions or arguments in the 'evidence' filed by the parties to the dispute. In ACADEMY (O/169/00) Mr Simon Thorley, acting as the Appointed Person said:
"It is as important in proceedings before the Registry as in any other proceedings that a proper line is drawn between that which is truly evidence, which should be the subject of a properly prepared affidavit, statutory declaration or witness statement as the case may be, and submissions or arguments in relation to the matter in dispute which need not. To allow the two to be present in the same document is bound to lead to confusion and misunderstanding."
Practitioners and litigants should therefore take note and provide evidence which goes to prove the facts stated in the pleadings. The Trade Marks Registry will not refuse to accept or comment on 'dual purpose' documents, but Principal Hearing Officers may well raise the matter with parties or comment in their decisions. It is therefore in everyone’s interest, parties to disputes, practitioners, the Trade Mark Registry and Principal Hearing Officers for 'evidence' to be evidence of fact and for 'submissions' to be presented at an appropriate point bringing the facts stated in the evidence and the case law together for the attention of the Hearing Officer.
In every case, the opportunity will be given to all parties to make submissions (orally or in writing) at a hearing or before a decision is taken from the papers and before the registrar’s Hearing Officer determines the weight to be attached to the evidence of fact filed in support of the pleadings.
Please address any enquiries about this notice to:
Mike Knight
Head
of Inter Partes Proceedings
The Trade Marks Registry
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom
Tel:
+44 (0)1633 811075
Fax: +44 (0)1633 814122