Tribunal section

Section last updated: February 2023

1. Introduction

1.1 Purpose of this chapter of the work manual

The purpose of this chapter of the manual is to outline procedures and give guidance on inter partes proceedings by:

• clearly defining the different types of proceedings
• indicating the sections of the Trade Marks Act 1994 (the Act) and the TradeMarks Rules 2008 (the Rules) which regulate each aspect of inter partes proceedings
• setting out the requirements for the filing of documents, pleadings and evidence
• detailing the practice of the Trade Marks Registry’s Tribunal Section
• detailing the activities of the Trade Marks Registry as a Tribunal
• setting out the avenues for appeal against decisions by the Trade Marks Tribunal

1.2 Decisions of other Courts and Tribunals

The management and decisions of Tribunal actions under the Act must take account of guidance laid down or endorsed by appellate bodies and other Courts.

The Trade Marks Act 1994 is largely derived from EU law (Directive 2015/2436). In relation to the interpretation of such retained law, the case law of the Court of Justice of the European Union (including the General Court) issued before the end of the transition period continues to apply, and is binding, as retained EU case law under section 6 of the Withdrawal Act. Furthermore, although not binding, regard can still be had to judgments made by the EU Court after the end of the transition period. However, the power to diverge from retained EU case-law has been vested in the Supreme Court, the High Court of Justiciary in Scotland, and various appeal courts, including the Court of Appeal, whose decisions are binding on the tribunal.

UK Courts

These decisions are binding on the Tribunal.

Appointed Person (AP)

Decisions are not binding on the Tribunal other than in the case being dealt with. However, they are of persuasive value in considering similar cases. These decisions are published on the Office website under ‘Hearings (Results of past decisions)’. Appointed Persons are experienced intellectual property law practitioners who are appointed by the Lord Chancellor. A decision of the Tribunal may be appealed to the Appointed Person (see section 7) but is not subject to further appeal.

1.3 Decisions of Tribunals/Courts outside the UK

With the exception of judgments of the EU Court (see above), decisions of other national courts/tribunals are not binding on the Registrar, nor are they usually of particular persuasive value. Decisions of national tribunals/courts within the EU may be of persuasive value in determining the meaning of the EU (Directive) derived domestic legislation but they are similarly not binding. Even when the UK was a Member State of the EU, Laddie J. held in Wagamama [1996] FSR 716 that:

It would not be right for an English Court, if it is firmly of a different view, to follow the route adopted by the courts of another Member State simply because the other courts expressed a view first. The scope of European legislation is too important to be decided on a ‘first past the post’ basis.

1.4 Decisions of Tribunals/Courts in other Member States

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1.5 Accessing decisions

Decisions in earlier cases are available from several sources:

British Library (BLs) – all decisions of the Tribunal’s Hearing Officers and the Appointed Persons are first published for dissemination through the British Library. Subsequently, and if they are of particular interest or importance, they may be republished in other legal reports such as RPCs, FSRs or ETMRs Decisions are available from the IPO website.

Reports of Patent, Design and Trade Mark Cases (RPCs) – these normally include reports of appeals to the courts and sometimes to the Appointed Person. They may also include decisions of the Tribunal where the decision contains statements of practice and interpretation of the law.

European Trade Mark Reports (ETMRs) – these contain reports from around the European Union (EU) by examination offices, tribunals & courts which bear upon the interpretation of the European Community Directive underlying all EU national and supranational trade mark law (and thus EU-derived domestic legislation).

Fleet Street Reports (FSRs) – these also contain reports of intellectual property cases of interest and are published by Sweet and Maxwell.

1.6 Practice guidance

In addition to case law the Tribunal publishes the following practice guidelines:

Tribunal Practice Notices (TPNs) – these provide guidance for practitioners on how the Registrar is regulating tribunal activities and are incorporated within this chapter.

Law Practice Directions (LPDs)/Patent Directorate Notices (PDN) – LPDs and/or PDNs are published on the Intellectual Property Office website to notify practitioners and the public of any changes to, or clarification of, internal guidelines.

1.7 The role of the Tribunal and its inherent power to regulate procedures

The inherent jurisdictions of the Tribunal to act in inter partes matters are defined in Pharmedica ( (2000) RPC 536, page 541), when Pumfrey J stated:

Notwithstanding the fact that the Registrar is, like the County Court, a tribunal which is established by statute, I have no doubt that the Registrar has the power to regulate the procedure before her in such a way that she neither creates a substantial jurisdiction where none existed, nor exercises that power in a manner inconsistent with the express provisions conferring jurisdiction upon her.

In inter partes proceedings the Tribunal is acting in a quasi-judicial capacity. Those who represent it must remain impartial at all times and are therefore unable to advise litigants on the strength or weakness of their cases. The Tribunal can help on matters of procedure but not substance. This was made clear by the Appointed Person in the ADRENALINE case BL O/440/99 in which it was held that it is not for those arbitrating these disputes to become involved in ‘debate’:

“10) Accordingly, in relation to opposition and revocation proceedings, the Registrar’s officers cease to perform an administrative function and act solely in a judicial (or quasi judicial) capacity. The distinction is I believe an important one, particularly in the circumstances of the present case. When acting in an administrative capacity, the Registrar has to enter the debate with the applicant, has to reason with him and necessarily will engage in correspondence or in conversations with the applicant in order to seek to resolve any matters arising. If this can be done to the applicant’s satisfaction, there is no need for a hearing.

11) Once the Registrar begins to perform his judicial function, the position is different. The Registrar or his officer is acting as a judge. The proceedings are adversarial, the issues are circumscribed by the pleadings and the parties are free to adduce the evidence and the arguments that they wish. It is the Registrar’s duty to adjudicate upon the issues raised. It is not his duty and, indeed, it would be wrong for him, when exercising this function, to enter into a debate with either party as to the validity or otherwise of the contentions put forward on any of the issues raised in the proceedings.â€

In correspondence, initial views may be expressed by the Tribunal on the basis of what the parties have said up to a particular point. An example would be in relation to a request for an extension of time. It must be stressed that an initial view does not represent a final determination of the matter, which may come after a hearing or written submission.

1.7.1 Litigants in person

As stated at paragraph 1.7above, the Tribunal must remain impartial at all times and are therefore unable to advise litigants. In Barton v Wright Hassall [2018] UKSC 12 Lord Sumpton stated:

“Their [i.e. LIPs] lack of representation will often justify making allowances in case management decisions and in conducting hearings. But it will not usually justify applying to litigants in person a lower standard of compliance with rules or orders of the court. The overriding objective requires the courts so far as practicable to enforce compliance with the rules: CPR 1.1(1)(f). The rules do not in any relevant respect distinguish between represented and unrepresented parties […] The rules provide a framework within which to balance the interests of both sides. That balance is inevitably disturbed if an unrepresented litigant is entitled to greater indulgence in complying with them than his represented opponent. Any disadvantage enjoyed by a litigant in person imposes a corresponding disadvantage on the other side […] Unless the rules and practice directions are particularly inaccessible or obscure, it is reasonable to expect a litigant in person to familiarise himself with the rules which apply to any step which he is about to take.â€

Also, in EDF Energy Customers Ltd v Re-Energized Ltd [2018] EWHC 652 (Ch), HHJ Matthews summarised a number of earlier decisions relating to how a court should deal with litigants in person. This included an analysis of Barton v Wright Hassall LLP [2018] UKSC 12. It read as follows:

“1. There is a general duty on tribunals to assist litigants, depending on the circumstances, but it is for the tribunal to decide what this duty requires in any particular case and how best to fulfil it, whilst remaining impartial.

2. The fact that a litigant is acting in person is not in itself a reason to disapply procedural rules or orders or directions, or excuse non-compliance with them.

3. The granting of a special indulgence to a litigant in person may be justified where a rule is hard to find or it is difficult to understand, or it is ambiguous.

4. There may be some leeway given to a litigant in person at the margins when the court is considering relief from sanctions or promptness in applying to set aside an order.â€

1.8 The Civil Procedure Rules

In its role as a tribunal, the Tribunal adheres to the same overriding objective as the court for dealing with cases justly. This is set out in rule 1.1 of the Civil Procedure Rules 1998 (as amended) and includes, so far as is practicable:

(2) (a) Ensuring that the parties are on an equal footing

(b) Saving expense

(c) Dealing with the case in ways which are proportionate –

(i) to the amount of money involved (ii) to the importance of the case (iii) to the complexity of the issues and (iv) to the financial position of each party

(d) Ensuring that it is dealt with expeditiously and fairly and

(e) Allotting to it an appropriate share of the court’s resources, while taking into account the need to allot resources to other cases

1.9 Procedures before the Tribunal

1) Opposition
2) Revocation (on grounds of non-use)
3) Revocation (on grounds other than non-use)
4) Invalidation
5) Rectification

1.10 Responsibility of one party to another

The rules require the Tribunal to send copies of the forms commencing an action to the other party; the same is true of any defence filed. However, the Tribunal will not, as a matter of course, copy any other document. Disputes before the Tribunal are inter partes, which means that the Tribunal is acting as an impartial adjudicating body between two (or more) parties. To ensure fairness and transparency of proceedings, it is imperative that any correspondence, including forms, sent to the Tribunal are copied to the other side and contain confirmation that it has been so copied. Failure to indicate copying and failure to copy is detrimental to the other side and to the resources of the Tribunal and its ability to allot resources to other users fairly. Copying of correspondence also applies to statutory forms. In particular, failure to copy requests for extensions of time can create unnecessary complications if time is granted and the other side has hitherto been unaware of the request. Similarly, failure to copy evidence to the other side, which is a requirement of rule 64(6)(b), results in the evidence not being considered filed (TK PATROL, BLO/426/02, Paragraph 7). If parties persistently fail to copy correspondence and documents to the other side, this will be regarded as unreasonable behaviour and there may be cost implications at the conclusion of the proceedings.

An increasing proportion of litigants using the Tribunal are without professional legal representation. The Tribunal provides information on its procedures on the IPO’s website and would expect users to look at this information prior to contacting the Tribunal. However, the Tribunal recognises that unfamiliar legal territory sometimes gives rise to questions. We will give reasonable information about procedures and clarification of directions but all parties using the Tribunal have a duty to respect its inter partes nature. This means that the Tribunal will not enter into telephone debates or give further reasons for a preliminary view (for example on extension of time requests) to just one party over the telephone. Such calls will be terminated because the other side is not party to the discussion. If a party disagrees with the other side’s/Tribunal’s view on a particular procedural issue, then it must put its comments in writing (either by letter or email), copied to the other side. Both for reasons of fairness and efficient use of the Tribunal’s resources, its officers will terminate telephone calls when their nature ceases to be appropriate, whether that is because of the content or the length of time the call is taking.

1.11 Right to Appeal

(Full details of appeal procedure can be found at section 7).

Under the Act any decision of the Tribunal can be appealed to the Court or to the Appointed Person.

1.12 Tribunal contact points

Inter partes proceedings are handled by the Tribunal Section. If you have a telephone query then you can expect a response within normal business hours – 9am – 5pm. The general enquiry number is: 0300 300 2000. Alternatively you can send an email to tribunalsection@ipo.gov.uk.

2. Formalities

2.1 Address for service

Rule 11 of the Trade Marks Rules 2008

In most circumstances an address for service in the UK (which for the purpose of the Act includes the Isle of Man, the Channel Islands and Gibraltar) must be filed. There are some exceptions to this where an address for service in the EEA may be filed instead, please see TPN 2/2020 for further information.

Failure to file an address for service may result in a party being considered by the Tribunal as having not defended or withdrawn from the proceedings or may result in an opposition or cancellation action being struck out.

2.2 Hours of business and excluded days

Section 80 of the Trade Marks Act 1994 Rule 80 of the Trade Marks Rules 2008

Section 80 of the Act provides that the Tribunal may give directions specifying the hours of business and the days which are ‘business days’.

Business done after the specified hours of business, or on a day which is not a business day, shall be deemed to have been done on the next business day; and where the time for doing anything under this Act expires on a day which is not a business day, that time shall be extended to the next business day.

Rule 80 requires the Registrar to publish, on the IPO website, any directions which may be given in relation to specified hours and business days.

The Registrar has made the following Directions under section 80(1) which came into force on 15 July 2011:

• trade Mark applications which do not claim priority under section 35 or 36 can be filed at all times on every day of the week including weekends, public holidays and bank holidays
• all other forms, applications and other documents can be filed at all times from Monday to Friday
• the Office shall be open from Monday to Friday between 9am and 5pm for all other types of business not detailed above
• for all purposes under the Act, other than the filing of new trade mark applications without a priority claim, the following shall be non-business days: All Saturdays and Sundays, Good Friday, Christmas Day and any day which is specified or proclaimed to be a bank holiday in or under section 1 of The Banking and Financial Dealings Act 1971

2.3 Interruptions to the normal operation of the Office and/or the postal service

Rules 75 and 76 of the Trade Marks Rules 2008

Rule 75 allows the Registrar to certify that a day or days have been subject to ‘interruption’ and accordingly, if any period of time specified in the Act or Rules expires on such a day, then that period shall be extended to the next following day not being an ‘interrupted’ or ‘excluded’ day (‘excluded day’ means any day which is not a business day as specified in a direction given by the registrar under Section 80; and an ‘interrupted day’ means any day which has been certified as such under Rule 75(1).

Rule 76 allows the Registrar to extend any time limit specified under the Rules where the Registrar is satisfied that the failure to do something was wholly or mainly attributable to a delay in, or failure of a communication service (‘communication service’ means a service by which documents may be sent and delivered and includes post, facsimile, e-mail and courier). For example, if a person uses a postal service which guarantees next-day delivery but the documents do not actually arrive at the Office until a later date, the Registrar may invoke rule 76, if the person can provide proof of such postage. The effect of invoking rule 76 will mean that the documents will be deemed to have been filed on the date that the postal service had guaranteed.

2.4 Filing of documents

Rules 2(3), 78 and 79 of the Trade Marks Rules 2008

The terms ‘to file’ or ‘filing’ means to ‘deliver to the Registry’.

• documents can be filed by post, email, in person or by courier to either, the London or Newport Offices
• the recommended e-mail address to be used for all fee-bearing forms is forms@ipo.gov.uk
• the Trade Marks Tribunal Section e-mail address, tribunalsection@ipo.gov.uk, can also be used for all other non-fee bearing forms and documents in relation to trade marks inter partes proceedings
• certain forms must be filed using the e-Form provided on the IPO website for example TM7A

Regardless of the method by which documents are filed, they will be dealt with in order of date of receipt.

2.5 Use of email

The Tribunal has no objection to the use of email communication, provided it is copied to the other side and marked as such. The Tribunal will deal with all correspondence in date order regardless of the method of filing. Emailed correspondence will not be answered out of turn merely because it has been electronically mailed.

2.6 Forms and fees in inter partes proceedings

The following table lists the forms which are applicable in inter partes proceedings before the Tribunal Section. All fee-bearing forms must be accompanied by that fee at the time of filing. The forms, guidance notes and current fees can be accessed at the following link: http://www.ipo.gov.uk/types/tm/t-formsfees.htm.

2.7 Payment of fees

Rule 2 of the Trade Marks (Fees) Rules 2008

Rule 2 of the Trade Marks (Fees) Rules 2008 provides that forms requiring payment of a fee must be accompanied by that fee. The fee must be filed at the same time as the relevant form. The term ‘accompany’ does not allow for the fee to follow shortly after the form is filed TITAN (BLO/460/01. The Tribunal will accept instructions such as, ‘Please debit our deposit account, being account number x’ however the party must ensure that the account contains sufficient funds, at the time of filing the form, to allow the fee to be taken. Payment can also be made by cheque, payable to ‘The Patent Office’, credit/debit card, bank transfer or other means acceptable to the Office.

3. Procedures before the Tribunal

3.1 Opposition

Section 38 of the Trade Marks Act 1994 Rules 17, 18, 19, 20, 21 and 43 of the Trade Marks Rules 2008

Once an application for registration has been examined and accepted by the Registry, it is published in the Trade Marks Journal. Once published, an application is open to opposition. Opposition may be filed in respect of all, or only some, of the goods and/or services for which registration of the trade mark is sought. The opposition period is two months but may be extended to 3 months.

Generally, oppositions are based upon section 3 and/or section 5 of the Act which set out absolute and relative grounds for refusal of registration. These sections should not be confused.

Section 3 of the Act: relates to an absolute ground; that is, generally speaking, something inherent in the mark itself which prohibits it from being registered.

Section 5 of the Act: relates to relative grounds; that is, where registration of the trade marks would impinge upon another person’s existing marks or rights.

Opposition based upon section 5 (relative grounds) can only be launched by the owner of the mark or right(s) on which the opposition is based. (Other parties who may have an interest in the proceedings, e.g. a licensee, would have to intervene after the proceedings were joined, (see section 4.10 for intervention.

The publication in the Trade Marks Journal of the following is also open to opposition:

a. Applications amended after publication (rule 25(2))
b. Regulations for collective/certification marks applied for under the 1994 Act (paragraph 8 schedule 1, paragraph 9 schedule 2)
c. Amendment of regulations of collective/certification marks (rule 30(4))
d. Amendments to registered marks (rule 32(3))
e. Removal of matter from the register (rule 53(2))
f. Reclassification of marks (rule 55(1))

Any person who wishes to lodge an opposition against any of the above should file Notice of Opposition on a TM7 with the appropriate fee within the period allowed. For “bâ€ “câ€ “dâ€ “eâ€ and “fâ€ above, the period for lodging opposition is two months. For “aâ€ above, the period is one month.

It should be noted that under the provisions of rule 77(5), no extension of the opposition period is allowed for lodging opposition.

3.1.1 Standard opposition example process diagram

3.1.2 Notice of opposition

Rule 17 of the Trade Marks Rules 2008

Any party wishing to oppose a published mark has a period of two months beginning immediately after the date of publication within which to indicate their intention to oppose the published mar