Changes to procedure for stays and suspensions issued

United Kingdom

The UK Trademarks Registry has published Tribunal Practice Notice (6/2004) detailing changes to procedure relating to requests for stays or suspensions in inter partes proceedings. The notice was issued in response to the large volume of requests received by the registry from parties wishing to negotiate a settlement. This rise has come about even with the introduction of an extended cooling-off period (now set at nine months), which allows parties to reach a settlement prior to proceedings being joined.

In changing the procedure, the registrar is not intending to force parties into filing evidence if an amicable resolution can be reached. However, the overriding objective is to avoid delays in the resolution of cases. Greater certainty is also required for third parties with reference to the outcome of proceedings. Under the Woolf reforms (revisions to UK civil procedure proposed by Lord Woolf), the time limit from issuing a counterstatement to a decision is 18 months. All requests for stays or suspensions will continue to be assessed on their individual merits.

The notice also states that parties must now show details of all actions undertaken in the negotiation of an amicable settlement prior to the request for a stay or suspension. They must provide a statement of the progress to date and an indication of the importance of any outstanding issues. The dates and the nature of the actions should be included in the statement. The statement does not need to include confidential and without prejudice details but it must be shown that there has been serious and continuing work towards a settlement prior to the request. Any communications with the clients should be included, in addition to those between representatives. Parties should clearly and realistically state when they expect negotiations to be completed. If there has been a cooling-off period, any actions, with dates, occurring in that period must be detailed.

On receiving this information, the registrar will consider whether a stay or suspension should be granted in light of the diligence with which the settlement negotiations have been pursued. The registrar may also grant a more limited period. If the request for a stay or suspension follows immediately after the receipt of the counterstatement and there has been no cooling-off period, the registrar may infer that the only agreement between the parties is that they have agreed to start negotiations. In such cases, the registrar will look at the request sympathetically but it is unlikely that any stay or suspension given will exceed three months.

Where the Trademarks Registry has given a preliminary indication in an opposition case, based on a comparison of the trademarks and their respective goods, a stay or suspension will not be granted prior to the filing of a form TM53 (request to proceed to the evidence rounds). The time period for filing a TM53 is extendable and can therefore be the subject of a time request. A request for a stay or suspension can also be made at the same time as filing a TM53 or immediately afterwards.

Rachel Aaron, Hammonds, London

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