Evidence in IPO Tribunal Proceedings

Intellectual Property Office

Author IPO Crown Copyright Licence:  

Jane Lambert

For many years the Chief Executive of the Intellectual Property Office ("IPO") who is also known as "the Comptroller" for patent and unregistered design right matters and "the Registrar" for trade marks and registered designs, has referred disputes that have been brought before him or her to officials known as "hearing officers".  Until 19 April 2000, those hearing officers conducted their proceedings very differently from the courts. There was nothing that resembled statements of case in civil litigation and evidence was filed in statutory declarations. As a result, many of those proceedings were slower and more expensive than they should have been.

A great change occurred on 26 April 2000 when Tribunal Practice Notice (TPN 1/2000) came into force. It addressed the following matters:

• "The Office and parties should endeavour to complete with notice proceedings within 18 months. (paragraph 7)
• The periods for filing a counterstatement and evidence in patents, registered designs and design right proceedings has been shorted from two months to six weeks except when lodging an opposition, eg. opposition to amend a patent specification under rule 40(2). (paragraph 8)
• The periods for filing a counterstatement and evidence in trade marks revocation (on grounds other than non use), invalidation and rectification proceedings has been shortened to six weeks. However, the period will remain at three months in opposition and revocation on grounds of non use proceedings though an additional "cooling-off" period of three months at the start opposition proceedings will be granted when sought by both parties. (paragraph 9)
• Hearing Officers will have discretion to shorten prescribed periods. (paragraph 10)
• The Office will set a period within which a preliminary (interlocutory) hearing should take place and give parties 14 days to agree a date in that period. The Office will fix a date if after 14 days the parties do not agree a date within this period, although Hearing Officers may override the 14 days if there are genuine difficulties. (paragraph 13)
• At the commencement of the final evidence round, the Office will aim to fix a date for a substantive hearing for approximately four months later. (paragraph 14)
• The party commencing action should provide a statement of case which properly sets out the grounds on which the case against the other side is to be based. If a party fails to provide sufficient information, the Patent Office may challenge the statement. Until the statement of case is in order the proceedings will not be progressed. (paragraphs 15 to 19)
• The Office has provided broad guidelines on how to set out a statement of case. (paragraphs 20 to 25)
• A declaration of the truth of the information in claims and defences is required for trade marks proceedings and encouraged in other proceedings. (paragraph 27)
• The Office will accept a witness statement in evidence although Hearing Officers are authorised to require the filing of an affidavit or statutory declaration if they consider it necessary. (paragraph 30)
• Exceptionally the Office is prepared to accept unsigned witness statements or unsworn statutory declarations or affidavits as meeting time deadlines provided a proper version of the evidence is filed within a specified period. The Hearing Officer may impose a cost penalty if, in the event, the formal evidence is different from that originally filed. (paragraph 31)
• Where a party adduces evidence of a statement made by another person and does not call that person as a witness, the Hearing Officer may permit the other party to call that person and cross examine them. (paragraph 32)
• In deciding whether to grant specific disclosure, Hearing Officers will generally follow principles which mirror those applied by the courts. (paragraphs 33 to 37)
• The Office intends issuing questionnaires on a selective basis prior to evidence rounds. (paragraph 38)
• Hearing Officers will adopt the selective use of "case management conferences" taking into account the circumstances of the case, eg the need to clarify issues, the degree of complexity, any related actions and any wider public interest issues. (paragraphs 39 and 40)
• Hearing Officers are also empowered to call a "pre-hearing review" prior to a hearing which will give them the opportunity to clarify matters and issue directions on the conduct of the hearing. (paragraph 41)
• The Office will routinely ask parties if they have considered Alternative Dispute Resolution (ADR) and Hearing Officers will be prepared to stay proceedings where ADR is being used or seriously considered. They may also take into account a party’s unreasonable refusal to consider ADR when awarding costs. (paragraph 42)
• In patents revocation hearings the applicant will be invited to open proceedings while in trade marks opposition hearings the opponent will be invited to open. (paragraph 43)
• Hearing Officers will retain discretion to deal with excessively long speeches and cross examination. (paragraph 44)
• Parties will generally be expected to supply skeleton arguments and authorities at least two days before a hearing. (paragraph 45)
• Adducing new evidence during a hearing will be discouraged and will only be allowed after the other party has had sufficient time to digest it. As a rule, documents will only be allowed to be introduced in cross examination which are designed to test the honesty and reliability of a witness. (paragraph 46)
• The Office will encourage parties to hold hearings, case management conferences and pre-hearing reviews using telephone conferencing arrangements and video links in suitable cases. (paragraph 47)
• Hearing Officers will offer parties the opportunity for proceedings to be decided without the need for a hearing. (paragraph 48)."

Paragraph 30 of that TPN provided:

"The rules have been amended to permit as an alternative to sworn evidence the filing of evidence in the form of a "witness statement" verified by a statement of truth. Hearing Officers are also authorised to require the filing of an affidavit or statutory declaration instead of a witness statement if they consider such a sworn statement to be more appropriate in a particular case. A witness statement must be in writing and signed and dated and should contain the evidence which the person signing it would be allowed to give orally. It should also contain a statement by the witness that he believes the facts in it are true."

On 8 Nov 2019, the IPO published Guidance on filing evidence about an application or in tribunal proceedings,  The Guidance includes instructions on How to complete a witness statement which covers the header, particulars of the witness. the body of the statement and the statement of truth.  The instructions are accompanied by a precedent or worked example.  Lawyers who are familiar with CPR 32,8 and paragraphs 17.1 to 20.1 of Practice Direction 32 - Evidence will notice several differences in the layout of the heading and the wording of the statement of truth.  The IPO does not require the information set out in paragraph 17.2 of PD32 in the top right-hand corner of the first page. Instead, particulars of the proceedings occupy that spot.  Similarly, the words 

"The fact in this witness statement are true to the best of my knowledge and belief"

suffice for the IPO rather than the less equivocal 

"I believe that the facts stated in this witness statement are true."

In most other respects, the format for witness statements in the IPO is similar to the format for civil proceedings.

Tribunal Practice Notice  1/2015 imposed restrictions on the nature and volume of evidence that may be filed in trade mark proceedings before the IPO without the hearing officer's permission.  As to the nature of the evidence, paragraph 3 stated:

• "it is not appropriate to file submissions in the form of evidence
• it is rarely necessary to file copies of hundreds of internet pages and never appropriate to file such evidence without an analysis or explanation as to what they show
• it is not appropriate to file evidence from after the relevant date, at least without an explanation as to how it sheds light on the factual position at the relevant date
• filing the whole of a bulky promotional brochure is rarely justified if only one or a few pages are relevant and the front and back covers together with the relevant page(s) would do. If the whole document is filed there should be an explanation as to exactly which pages are relevant and why
• similarly, it is not necessary to file a company’s entire annual report when only the front cover and a few relevant pages would do
• it is not appropriate to file the results of searches of trade mark registers showing that other marks, including an element common to the marks at issue, are registered in the names of third parties, without evidence that those marks were in use in the UK at the relevant date
• it is not appropriate to file search engine auto prompt evidence (i.e. terms suggested by the search engine in response to initial inputs from the user) as evidence of a likelihood of confusion on the part of human beings."

In respect of volume, paragraph 4 of TPN 1/2015 stated that hearing officers will not routinely challenge the relevance of evidence that is kept within the following limits:

• evidence in chief: 300 pages
• evidence in response: 300 pages
• evidence in reply: 150 pages.

The latest Guidance from the IPO provides a precedent for exhibit header sheets and a pro forma that may be used instead of a witness statement to provide evidence of the use of marks.

Anyone wishing to discuss this article or IPO tribunal proceedings generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.