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Monday, 15 March 2010

Procedural irregularities: when do you let go of a decision?

The IPKat's friend, IP blogger, commentator, practitioner and enthusiast Barbara Cookson (Filemot Technology Law Ltd) writes to draw his to attention to an unusual episode in the annals of the British Trade Mark Registry. Barbara writes as follows:
"This was a fairly standard opposition decided on the papers, with the primary ground based on similarity with an existing registration.

That existing registration was over five years old, so proof of use was required and duly filed. Since Hackett is a high-street brand, they were able to show use of their H logo on aftershaves, cufflinks, silverware, leather goods and clothing. This meant there was an overlap of identical goods between the two marks. On 17 July 2009, in MIP Metro Group Intellectual Property GmbH's international registration; opposition of Hackett Ltd, Case O-210-09, Ann Corbett applied a global approach and came to the conclusion "albeit with some hesitation" that there was no likelihood of either direct or indirect confusion, even where identical goods are concerned (paragraph 51).
There were also grounds under section 5 (3) and (4) (passing off and dilution), both of which require evidence of reputation/goodwill. Ms Corbett's view of the evidence was that it did not allow her to find that the mark had a reputation and both these grounds were swiftly dismissed primarily because the marks were not similar in her view. The result: victory for MIP and a costs order of £1700.

In MIP Metro Group Intellectual Property GmbH's international registration; opposition of Hackett Ltd, Case O-348-09, on 4 November 2009, Oliver Morris issued a second substantive decision, stating in paragraph 6 that this was because the earlier one had been set aside by the registrar due to procedural irregularity (not set out in the decision, but believed to have been the fact that Ms Corbett did not have all the submissions from the parties). The evidence mentioned by Mr Morris is the same as that mentioned by Ms Corbett. Mr Morris arrived at a slightly more limited specification for the earlier right. The silverware went out. The leather goods became specific and the clothing was only men's. At the end of his global assessment -- which is pretty lengthy and deeply analytical, Mr Morris did find that there was a likelihood of confusion for the goods which were identical or highly similar (aftershave and clothing).
Mr Morris also gave rather more attention to the passing off and dilution grounds than Ms Corbett, but eventually came to the same conclusion that they failed because the evidence was not strong enough. Since Mr Morris had found for Hackett on a few goods he decided not to make a costs order.

Both decisions seem to be well within the normal range of conclusions that a hearing officer could draw on this scenario".

The IPKat is fascinated. In particular, though he is unfamiliar with the highways and byways of registry practice in instances such as this, he wonders whether readers are happy with signed and published decisions being set aside in circumstances other than the good old-fashioned appeals he enjoys so much. He believes that this case has indeed gone to appeal-- which is where many people might consider it should have gone in the first place.

There's another problem with in-office procedural regularities. We don't know about them unless the office confess to them. I trust your skills to create some interest. At the very least we will open the floodgates and any agent who has an opposition decision they don't like will protest. What fun! Merpel adds (not that it makes any difference) that MIP Metro uses an H on its H-line hotel products, which it sells through Makro stores.

6 comments:

Anonymous said...

Thanks for the tip. I have been dealing with my own opposition without an agent. I always knew the people at Newport were biased against me

Anonymous said...

I suppose its some consolation that OHIM still abides by the rule of law even if the UK Patent Office does not.

They sayThe Complaints Unit will not consider complaints about the legal reasoning of the decisions granted by OHIM. In case of disagreement with OHIM decisions, you are invited to file an appeal for decisions taken by CTM or RCD examiners.

Claire Lazenby said...

There was an appeal to the AP a few years ago on this very issue: if memory serves, a Hearing Officer had issued a decision on the basis of only papers from one party because, whilst the other party had filed arguments, those arguments were mislaid at the Registry and the Hearing Officer did not see them prior to making his decision. The party whose arguments were mislaid then appealed, and the decision of the AP was that the decision of the Hearing Officer should be set aside in its entirety, and the file passed to a different Hearing Officer who would then give a fresh decision. I am sorry that I cannot remember the name of the decision, but I do recall reading it in the CIPA Journal about two or three years ago. It sounds therefore as if in this matter for Hackett what the Registry did in setting aside Mrs Corbett’s decision was to follow this previous decision.

Anonymous said...

but surely they have made the decision to rectify without a hearing so in itself it could be proceduraly irregular. If there was a gaf then its an appeal. Pretty simple one but an appeal nonetheless and since there is no appeal fee why not do it in the open rather than clandestinely

Anonymous said...

There is an express 'set aside' power available to the registrar in rule 43 TMR 2008. This is just by way of information and not intended to be a comment on the specific case.

Filemot said...

The Appeal Hearing is set for 10:30 on World IP Day 26 April 2010 before Anna Carboni
http://www.ipo.gov.uk/t-diary-appeal.htm
This is a public hearing in London. The Registry does not think it important enough for them to be represented.

Rule 43 provides an exceptional set aside provision but there is not one for Oppositions.

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