Procedural fairness overrides efficiency concerns in oppositions


Bus Eireann/Irish Bus v The Controller of Patents, Designs and Trademarks ([2007, IEHC 221], June 13 2007) was an appeal from the decision of the controller on the interpretation of Rules 20 to 23 of the Trademark Rules 1996. The High Court held that the opponent had tried to introduce evidence under Rule 22 to which the applicant (Bus Eireann/Irish Bus) had not had the opportunity to respond. As the evidence was directed at establishing the applicant's bad faith, the court held that as a matter of fairness, the applicant should be permitted to respond.

The opponent had submitted evidence under Rule 22 in reply to the evidence provided by the applicant under Rule 21. Rule 22 provides that the opponent may, within two months of receipt of a copy of the evidence, file further evidence that is "confined to matters strictly in reply". Under Rule 23, no further evidence can be filed without the controller's leave. The applicant alleged that the opponent's evidence went beyond evidence in reply in that it introduced new evidence of bad faith. The applicant sought exercise of the controller's discretion under Rule 23 to file evidence in reply, but the controller refused to exercise his discretion.

Under Rule 20, the opponent may "file such evidence by way of statutory declaration, as he or she desires to adduce in support of his or her opposition". The court held that when adducing evidence under Rule 20(1), it is not permissible for the opponent to hold back evidence in order to use it as a means of gaining a "tactical advantage". Furthermore, the court held that Rule 21 should be used only to support the application and not as a means to "adduce evidence in response to the opponent's evidence". The court held that Rule 23 must be used in order to ensure that neither party is deprived of the opportunity of adducing evidence in response to any other evidence that tends to support the charge before the issue is adjudicated. The court held that a submission that goes beyond a reply to the applicant's evidence, as provided for in Rule 22, may unbalance the procedural fairness against the applicant.

For the purposes of determining whether further evidence should be permitted by the controller under Rule 23, the court held that the controller should have regard to:

  • whether the evidence could have been filed earlier;

  • the nature of the objection to the mark; and

  • whether the applicant is afforded the minimum protection to defend its good name (in cases alleging bad faith).

The case is of note in future opposition procedures as it effectively expands the controller's discretion to accept additional evidence over and above the matters in issue. Although the case will result in some delays to opposition proceedings, it will also benefit the process. Withholding evidence for reasons of tactical manoeuvre is clearly unacceptable. Furthermore, where bad faith is at issue, the party facing the allegation has more leverage to make additional submissions under Rule 23. The decision is also an important reminder to the controller that procedural fairness - in particular in relation to allegations of bad faith - trumps concerns about the speed and efficiency of the opposition process.

Alistair Payne, Matheson Ormsby Prentice, Dublin

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