Administrative Appeals Board implements oral hearings in trademark proceedings
- From January 2019, the Administrative Appeals Board has implemented the procedure to hold oral hearings in appeal proceedings
- The new system will allow parties to file evidence in a trial-like manner; review evidence with more detail; and leave a more lasting and thorough impression on the judges
- Oral hearings, as well as the new evidentiary possibilities that are created with them, may allow for a more technically elevated debate and may enable practising attorneys to strengthen the defence of IP rights
Under Costa Rican law, the Trademark and Patent Office´s final ruling over the admissibility of a trademark or patent can be challenged before the Administrative Appeals Board. However, until the end of 2018, these appeal proceedings were strictly written, with no possibility to request an oral hearing before the board – even though the law contemplated this. From January 2019, the Administrative Appeals Board has implemented the procedure to hold oral hearings in appeal proceedings.
Oral hearings are relevant due to the new possibilities regarding the means of admitting evidence. Given the nature of a written appeal, the evidence that could previously be filed was limited to documents, digitally submitted videos and photographs, among other things. It was not possible to cross-examine witnesses, experts or even examining attorneys from the Trademark and Patent Office.
The new system will allow parties to:
- file evidence in a trial-like manner;
- review evidence with more detail; and
- leave a more lasting and thorough impression on the judges.
It may even allow parties to cross-examine witnesses via video conference – although this is still to be confirmed by the board. This will make a significant difference on the defence of technical matters such as a patent refusal appeal or complex trademark cases involving non-traditional marks.
Oral hearings, as well as the new evidentiary possibilities that are created with them, may allow for a more technically elevated debate and may enable practising attorneys to strengthen the defence of IP rights.
Nevertheless, the practical results of this type of hearing remain to be seen. From a critical standpoint, the Administrative Appeals Board has a significant procedural delay. Following the filing of a notice of appeal, the issuance of a final resolution on a trademark procedure may take as long as three or four months. Therefore, there are great expectations for quicker response times from the board.
In addition, the orality manual issued by the board is vague regarding the admissibility to perform an oral hearing. The orality manual stablishes that an oral hearing will not be applicable to all appeals; rather, it limits hearings to “complex matters” and fails to provide an exhaustive list.
The board has explained – through the preparative discussions with practising attorneys – that ‘complex matters’ will constitute, among other things:
- opposition proceedings;
- nullity and non-use actions in trademark disputes; and
- highly complex patent resolutions.
Thus, the lack of a clear, written criteria regarding the admissibility of an oral hearing creates uncertainty that will have to be resolved by the board through case law.
Notwithstanding the above, the implementation of an oral hearing in appeal proceedings is an important step towards a more efficient, highly technical process that can result in a better defence of each case.
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