IPO issues practice notice on appeals to appointed person

The UK Intellectual Property Office (IPO) has published a tribunal practice notice on appeals to the appointed person against decisions of the registrar in inter partes proceedings. In addition, the IPO has introduced Form TM33(P) for use in all legal proceedings before the Trademarks Tribunal.

Under Section 76 of the Trademarks Act 1994, an appeal can be brought against a decision of the registrar either before the High Court or the appointed person. Appointed persons are experienced IP practitioners appointed by the Lord Chancellor to hear and determine appeals against decisions of the registrar. Their decisions are final, although they may be taken to judicial review in certain circumstances.

Where a party opts to appeal to the High Court rather than the appointed person, the IPO can have no further dealings with the matter. If an appeal has been made to the appointed person rather than the court, the appointed person, the Trademarks Registry or any other person involved in the case may nevertheless refer the appeal to the court under Section 76(3) of the Trademarks Act if it appears that a point of general legal importance is at issue. In each case, the appellant is allowed 28 days in which to comment on the proposed referral.

To initiate an appeal to the appointed person, an appellant must send a notice of appeal to the treasury solicitor on Form TM55 within 28 days of the date of the registrar's decision. However, before the notice can be filed, the appellant must have received a written copy of the registrar's full decision. The notice must:

• state the ground(s) of appeal;
• identify the case(s) relied upon in support of each ground; and
• clearly specify whether, and in which respects, the appellant wishes the appointed person to reverse, set aside or vary the registrar's decision (COFFEEMIX Trademark ([1998] RPC 717)).

An appeal cannot challenge the registrar's reasoning in isolation, but it can do so as part of an appeal against the decision itself. There is no fee for filing Form TM55, but the appointed person will usually order that the losing party on appeal contribute to the other party's legal expenses. This will be in addition to any costs already awarded at earlier stages of the case.

If more time is required to file the notice, the appellant must file a request for an extension of time (Form TM9) with the appropriate fee. Any applications for an extension of time must be accompanied by detailed reasons in support of the extension. If both sides are considering making an appeal, one side cannot rely on an extension that has been granted to the other. Each side must apply for their own extension as required.

The practice notice states that, in deciding whether to grant an extension of time for filing an appeal to the appointed person, the registrar will consider the comments of the appointed person in Whiteline Windows Limited v Brugmann Frisoplast GmbH (BL O/299/00):

"Whilst I accept that the registry has power under... the current Trademarks Rules 2000, Rule 68, to extend the time of 28 days provided for an appeal, this is a matter which must be approached with the greatest caution so as to ensure that the exercise of discretion does not undermine the purpose underlying the statutory provision. Appeals create uncertainty and it is in the interest of everyone that appeals are disposed of timeously. Extensions of time in which to enter notices of appeal are therefore not to be encouraged. [...] I should not like it to be thought that extensions of time for serving appeal documents will be granted lightly."

Notwithstanding these words of warning, the practice notice acknowledges that each case will be decided on its own merits. Therefore, in the appropriate circumstances, an extension of time may be permitted even after the expiry of the 28-day period (Virgin Records Ltd v Ministry of Sound Recordings Ltd (BL O/136/03)).

Although there is no prescribed period for filing a respondent's notice (for which there is also no prescribed form), the practice notice indicates that 21 days should be regarded as appropriate. Moreover, if a respondent believes that the registrar was correct and that the decision should thus be upheld for the reason(s) given in support, there is no need to serve a respondent's notice. However, if a respondent believes there to be further reasons for upholding the registrar's decision, the respondent should file a respondent's notice setting out those additional reasons.

In addition, the IPO has introduced a new form for use in all legal proceedings before the Trademarks Tribunal, available from April 21 2008. The IPO has requested that parties to proceedings use Form TM33(P) with immediate effect.

According to the IPO, the new Form TM33(P) has been designed to avoid errors when changes are made to agent or contact details when the request is in respect of inter partes proceedings before the Trademarks Tribunal. As well as providing the new agent and/or contact details, Form TM33(P) requires that the applicant identify the IPO reference for the proceedings by providing the opposition, revocation, invalidation or rectification number. In addition, the signatory must confirm its precise role in the proceedings.

Chris McLeod and James Tarleton, Hammonds LLP, London