One of the most interesting appeals to listed before the Appointed Persons this month will be Henkel KgaA's case. According to the Patent Office list, it is due to come on before Geoffrey Hobbs QC on 21 Sep 2005.
For those not familiar with our Trade Marks Act 1994, anybody who objects to an application to register a trade mark in the UK may file observations to the Registrar of Trade Marks (aka "the Comptroller" in patent and unregistered design right proceedings) under s.38 (3) inviting the Trade Marks Registry of the Patent Office to reconsider the application or oppose the application under s.38 (2). An important practical difference between filing observations and opposing an application is that the person opposing the application ("the opponent") risks having to pay the other side (that is to say "the applicant")'s costs if his or her opposition fails, though those costs are usually limited to a few thousand pounds by Tribunal Practice Notice 2/2000 as I have already explained in my previous post, "Mediating Disputes from the Trade Marks Registry".
Unless the applicant and opponent are able to resolve their differences by negotiation the opposition goes before an official appointed by the Registrar known as "a hearing officer". The hearing officer may decide the issue on paper or at a hearing where the parties may appear themselves or by a patent agent, trade mark attorney, solicitor or barrister. Hearing officers' decisions since 1998 are summarized at http://www.patent.gov.uk/tm/legal/summaries/index.htm
with the full text at http://www.patent.gov.uk/tm/legal/decisions/index.htm.
A party that is dissatisfied with a hearing officer's decision may appeal to the Chancery Division of the High Court of Justice in England and Wales or to "a person appointed by the Lord Chancellor to hear and decide appeals" (the Appointed Person") under the Trade Marks Act 1994 (see s.76 (2) and s.77 (1)). Appointed persons are senior practising barristers or solicitors or academic lawyers. The practical difference between the two procedures is that an appeal to the appointed person is final but the costs that the appointed person can award against the unsuccessful party are limited to those that could have been awarded by the hearing officer. By contrast, a party dissatisfied with the judgment of the High Court can appeal to the Court of Appeal and from there to the House of Lords (or, when it comes into being, the Supreme Court of the United Kingdom) but there is no limit to the amount of costs that he or she may be ordered to pay.
Those who want more information can download leaflets entitled "Opposing a Trade Mark" and "How to appeal against a decision made by the Trade Marks Registry". They can also visit the "How to prepare for a Trade Mark Hearing" page on the Patent Office website.
The Henkel Appeal
The application under appeal is an international application under the Madrid Protocol based on a French trade mark registration. The sign that the applicant seeks to register is a 3-dimensional shape coloured red, white an blue. A photograph of the sign appears on page 1 of the decision of the hearing officer, Mr Salthouse of 5 Feb 2005. The article in the photograph appears to be a dishwasher tablet. The application was opposed by Unliever Plc under s.3 (1) (a), (b), (c) and (d), (2) (b) and (6) of the Trade Marks Act 1994. Unilever's opposition succeeded under 3 (1) (b) but not on the other grounds which were either abandoned or dismissed. The interesting point in this appeal is that Henkel relied on Mr Hobbs's previous decision in Benckiser NV which also contained a 2-layered tablet. The question will be whether Mr Salthouse applied correctly Mr Hobbs's test.