• IN THE UK OFFICE

    Practice Issues Eyed in EXTREME APPEAL

    Practitioners tooling up for inter partes proceedings before the UK-IPO should note the recent appeal in Pan World Brands Ltd. v Tripp Ltd., concerning the trade mark EXTREME (O-161-07). Despite involving a fairly conventional non-use cancellation, the decision of the Appointed Person addresses a cornucopia of relevant practice issues, some of the more important of which are highlighted below.

     

     “BARE ASSERTIONS” OF USE

    In defending its registration from non-use attack, the registered proprietor relied on a witness statement from its trade mark attorney. The statement asserted that the mark had been in use in the U.K. for luggage and bags between 1997 and 2000 and exhibited a poster and some copy documents apparently relating to product orders.

    Later, the proprietor’s managing director filed a witness statement adding further information in response to points raised by the applicant for revocation.

    The applicant for revocation claimed that the proprietor’s corroborating witness statement, the only one filed by a witness with first-hand knowledge of the use, amounted to a “bare assertion” not capable of constituting sufficient evidence of use.

    The Appointed Person agreed that a “bare assertion” would not meet the required standard. However, he declined to find that the proprietor had made such an assertion.

    In his view, a “bare assertion” amounted to a bald statement that a mark had been put to genuine use. This was distinguishable from a case where a proprietor gave evidence as to use for certain goods or services within a particular period, but did not support it with documentary evidence. In such a case, the impact of the absence of supporting documents would depend on the facts of the case, but the mere fact that documents were not filed would not on its own result in a failed defence under English law.

     

    COMMENT

    Before OHIM, the position is different because Rules 22 (2) and (3) CTMIR specifically require evidence of use in documentary form. No parallel provisions exist in the Trade Marks Act 1994, however, and the Appointed Person did not consider the UK-IPO obliged to follow OHIM practice on this point.

    It is worthwhile remembering this practical distinction and, in particular, the particular importance of documents in OHIM proceedings. Their relevance in U.K. proceedings should not be disregarded, however, as they may make otherwise weak evidence of use compelling.

     

    CROSS-EXAMINATION

    The applicant for revocation did not seek to cross-examine the proprietor’s managing director nor notify the proprietor that the evidence would be challenged. However, at the first-instance hearing the applicant’s representative invited the hearing officer to disbelieve certain statements made on behalf of the proprietor.

    The Appointed Person looked with disfavour on this approach. Quoting from Phipson on Evidence, a leading practioner’s work, he observed that it is not normally open to a party to challenge evidence given by way of witness statement where the party has not notified the other party that the evidence is to be challenged or sought leave to cross-examine the relevant witness.

    Despite this brightline rule, the Appointed Person noted that many parties sought to challenge evidence at hearings without having given notice or sought leave to cross-examine. He cited several decisions overturned on this basis and urged hearing officers to “guard themselves against being beguiled by such submissions (which is not, of course, to say that they should assess evidence uncritically).”

     

    COMMENT

    These remarks are a salutary reminder of the need to establish a firm foundation for an attack on an opposing party’s evidence. In the case of witness statements, that foundation can sometimes only reasonably be built through careful cross-examination.

    Cross-examination is not common in UK-IPO proceedings, however, and there will be times when it is neither possible nor practical for reasons such as costs or proportionality. In such cases, however, a party intending to challenge the evidence should give sufficient written notice to allow the opposing party to respond at the hearing.

    It can sometimes be difficult to tell the difference between an attack on evidence and an invitation to assess evidence critically. However, as a general rule a challenge to truth or credibility will almost always fall in the former camp, and in such cases cross-examination or notice should follow.

     

    RESTRICTION OF GOODS

    The Appointed Person noted that although there were differences in practice between the UK-IPO and OHIM on the appropriate way to restrict specifications, the differences were probably smaller than they appeared.

    Both offices agreed that the matter had to be assessed from the consumer’s point of view, with the question being “how the average consumer would fairly describe the goods in relation to which the trade mark had been used.”

    In this case, the registration covered the broader term “luggage” and the proprietor had proved use in respect of “hold-alls.” These were items of luggage in the eyes of the average consumer, and the Appointed Person was satisfied that the average consumer would not divide that term up into narrower sub-categories. It was appropriate, therefore, to uphold the registration for “luggage” in general.

     

    COMMENT

    Decisions applying the “average consumer” test on restrictions of goods following the CFI's decision in Mundipharma AG v OHIM (Case t-256/04) are still in their early days. However, the finding that “luggage” is a sufficiently discrete category that further sub-categorisation is not appropriate seems right. Further decisions on other types of goods and services will be awaited with interest.

     

    CROSS-APPEALS

    The appeal in this case was brought by the registered proprietor. The applicant for revocation did not file a cross-appeal or a respondent’s notice of an intention to raise any points on the appeal. Nonetheless, when skeleton arguments were exchanged the applicant for revocation argued that the revocation should have been ordered from a date alternative to that given in the decision.

    The Appointed Person considered that he had inherent jurisdiction to admit a respondent’s notice seeking to uphold a hearing officer’s decision, whether on the same grounds as, or on additional grounds to, those raised at first instance. He did not, however, regard himself as having the power to permit a respondent to argue that a hearing officer’s decision should be varied. In that case, only a timely cross-appeal filed within 14 days of service of the appeal would allow the issues to be raised.

     

    COMMENT

    This point highlights a further area of difference between U.K. and OHIM practice.

    Under Article 8 (3) of the Procedures of the Boards of Appeal, a respondent to an inter partes OHIM appeal may make any point in an appeal proceeding, regardless whether it has itself filed an appeal or whether the issues were raised at first instance.

    Before the UK-IPO, the point is not dealt with by rules and there is uncertainty as to the status of a non-appealing respondent’s submissions where it argues that the first-instance decision should be varied.

    Interest groups are lobbying the UK-IPO to clarify the matter by issuing rules. Until then, though, best practice requires respondents to UK-IPO appeals to file cross-appeals within the 14-day window where there is any prospect that they may want to argue that the first-instance decision should be varied. Failure to do so may prevent the issue being raised at all later.