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.