Appeals from the Trade Marks Registry
The CEO of the Intellectual Property Office, who is known as "the registrar" in trade mark proceedings pursuant to s.62 of the Trade Marks Act 1994, exercises judicial as well as executive functions. He or she adjudicates disputes between applicants for trade marks and examiners known as ex parte proceedings. The registrar also decides disputes between applicants or registered proprietors and third parties that are known as inter pates proceedings". The registrar's judicial functions are performed on his or her behalf by officials known as "hearing officers" though they are not mentioned in the legislation. I discussed ex parte hearings in If the examiner says "no" - ex parte hearings in the Trade Marks Registry in NIPC London on 10 Aug 2015 and inter partes hearings in Oppositions in the IPO's Trade Mark Registry in the same publication on 12 Aug 2015. Other inter partes proceedings include invalidity challenges and revocation applications.
The Court and the Appointed Person
A party dissatisfied with a hearing officer's decision may appeal either to the court or a person appointed by the Lord Chancellor to hear and decide appeals known as "the appointed person" pursuant to s.76 (2) of the Act. In England and Wales "the court" means the Chancery Divison, in Scotland the Court of Session and in Northern Ireland the High Court of Northern Ireland. Appointed persons are experienced intellectual property professionals like] Geoffrey Hobbs KC and Professor Ruth Annand.
A party dissatisfied with a hearing officer's decision may appeal either to the court or a person appointed by the Lord Chancellor to hear and decide appeals known as "the appointed person" pursuant to s.76 (2) of the Act. In England and Wales "the court" means the Chancery Divison, in Scotland the Court of Session and in Northern Ireland the High Court of Northern Ireland. Appointed persons are experienced intellectual property professionals like] Geoffrey Hobbs KC and Professor Ruth Annand.
Consequences of Appealing to the Appointed Person
An appeal to the appointed person rather than to the court has two important consequences, The first is that the appointed person's decision is final. No appeal lies from his or her decision. By contrast appeals from the High Court lie to the Court of Appeal and in some cases from the Court of Appeal to the Supreme Court. For that reason, appeals to the appointed person tend to be resolved more quickly and cheaply than appeals to the court. The second consequence is that the appointed persons' power to award costs is the same as the hearing officers'. Theoretically, those powers are very wide but, in most cases, costs are awarded on a scale that offers less than full reimbursement.
The Appointed Person's Decision is Final
I shall now discuss the details. Where an appeal is made to an appointed person, s.76 (4) provides that his or her decision is final. That is the end of the story even if the decision is wrong. I am not aware of any general dissatisfaction with the appointed persons' decisions though Ian Gill wrote "the odds are not good" in Appeals to the Appointed Person in the UK – the unappealing truth in the IPKat on 2 April 2020. He explained:
"In the first two months of 2020 there have been 21 published decisions from the Appointed Person in the UK ........... However of those 21 appeals only three were successful and only one actually resulted in a material change to the first instance outcome."
"In the first two months of 2020 there have been 21 published decisions from the Appointed Person in the UK ........... However of those 21 appeals only three were successful and only one actually resulted in a material change to the first instance outcome."
As all appointed persons have spent their careers in intellectual property which is not true of all chancery judges or deputies I should be surprised if the quality of appointed persons' decisions was significantly lower than the court's.
The Appointed Person's Power to award Costs
Turning to the appointed persons' powers to award costs, s.76 (5) states:
S.68 (1) (a) provides for rules to be made empowering the registrar to award any party such costs as he or she may consider reasonable. Rule 67 of the Trade Marks Rules 2008 confers very wide powers on the registrar:
In practice, hearing officers award costs in accordance with Tribunal Practice Notice 2/2000 ("TPN 2/2000). That TPN limits costs to a scale which is updated from time to time. The latest update is annexed to TPN1/2023. It is important to note that hearing officers and appointed persons may order costs above the scale in the circumstances discussed in paras 5 and 6 of TPN1/2023 but there have not been many occasions when that has happened. It is, therefore, possible but not very likely for an appointed person's award to be at least as swingeing as a judge's.
Appeals to the High Court
Appeals to the High Court are governed by the Civil Procedure Rules ("CPR"). CPR 63.16 states that CPR Part 52 applies to appeals from the Trade Marks Registry. CPR 52.2 requires all parties to comply with Practice Directions 552A to 52E although there is nothing in those practice directions that relates specifically to trade mark appeals.
Permission to Appeal
As the Registry is not one of the tribunals mentioned in CPR 52.3 and there is nothing in the Trade Marks Act 1994 or the Trade Marks Rules 2007 to require it, there is no need to seek permission to appeal from a final decision of a hearing officer to the High Court. Rule 70 (1) of the Rules defines final and interim decisions as follows:
"Except as otherwise expressly provided by these Rules an appeal lies from any decision of
the registrar made under these Rules relating to a dispute between two or more parties in connection
with a trade mark, including a decision which terminates the proceedings as regards one of the
parties or a decision awarding costs to any party (“a final decision”) or a decision which is made at
any point in the proceedings prior to a final decision (“an interim decision”)."
Rule 70 (2) makes clear that permission is required only for appeals from interim decisions. It is of course necessary to apply to the Court of Appeal for permission to make a second appeal from the High Court to the Court of Appeal under CPR 52.7 (1).
Appellant's Notice
CPR 52.12 (2) requires an appellant to file his or her appellant’s notice within such period as may be directed by the hearing officer or 21 days from the date of the decision if the hearing officer gives no such direction.
The learned editors on Morcom on Trade Marks say at para 20.27 say that the appeal must be brought by way of a notice of appeal in a form approved by the court but add in a footnote that at the time of writing (of this and the last edition) no form had been approved by the court. They submit that "such an appeal notice would be in the same form as a notice of appeal from the High Court in its original jurisdiction since in such a context the High Court is, in effect the Court of Appeal". They cite by analogy, in relation to appeals from the Comptroller of Patents the case of Ladney and Hendry's International Application [1998] RPC 319, 330 lines 21–47. It is respectfully suggested that Form N161 is the correct form as the guidance note makes clear that that form is to be used for all appeals including those to the High Court and Court of Appeal.
CPR 63.16 (3) requires copies of the appellant's notice and all documents referred to in it to be served on the registrar.
In Instagram LLC v Meta 404 Ltd [2023] EWHC 436 (Ch) (3 March 2023) Mr Justice Richards held that CPR 52.21 applies to appeals from hearing officers. That rule provides that every appeal will be limited to a review of the decision of the lower court unless a practice direction applies to the contrary or the court considers it in the interests of justice to hold a rehearing. No practice directions applied to the contrary and neither party contended that it was in the interests of justice to hold a rehearing.
The learned judge referred to para [2] of Lord Justice Lewison's judgment in Volpi and another v Volpi [2022] 4 WLR 48, [2022] EWCA Civ 464, [2022] WLR(D) 173:
"i) An appeal court should not interfere with the trial judge's conclusions on primary facts unless it is satisfied that he was plainly wrong.
ii) The adverb "plainly" does not refer to the degree of confidence felt by the appeal court that it would not have reached the same conclusion as the trial judge. It does not matter, with whatever degree of certainty, that the appeal court considers that it would have reached a different conclusion. What matters is whether the decision under appeal is one that no reasonable judge could have reached.
iii) An appeal court is bound, unless there is compelling reason to the contrary, to assume that the trial judge has taken the whole of the evidence into his consideration. The mere fact that a judge does not mention a specific piece of evidence does not mean that he overlooked it.
iv) The validity of the findings of fact made by a trial judge is not aptly tested by considering whether the judgment presents a balanced account of the evidence. The trial judge must of course consider all the material evidence (although it need not all be discussed in his judgment). The weight which he gives to it is however pre-eminently a matter for him.
v) An appeal court can therefore set aside a judgment on the basis that the judge failed to give the evidence a balanced consideration only if the judge's conclusion was rationally insupportable.
vi) Reasons for judgment will always be capable of having been better expressed. An appeal court should not subject a judgment to narrow textual analysis. Nor should it be picked over or construed as though it was a piece of legislation or a contract."
"i) An appeal court should not interfere with the trial judge's conclusions on primary facts unless it is satisfied that he was plainly wrong.
ii) The adverb "plainly" does not refer to the degree of confidence felt by the appeal court that it would not have reached the same conclusion as the trial judge. It does not matter, with whatever degree of certainty, that the appeal court considers that it would have reached a different conclusion. What matters is whether the decision under appeal is one that no reasonable judge could have reached.
iii) An appeal court is bound, unless there is compelling reason to the contrary, to assume that the trial judge has taken the whole of the evidence into his consideration. The mere fact that a judge does not mention a specific piece of evidence does not mean that he overlooked it.
iv) The validity of the findings of fact made by a trial judge is not aptly tested by considering whether the judgment presents a balanced account of the evidence. The trial judge must of course consider all the material evidence (although it need not all be discussed in his judgment). The weight which he gives to it is however pre-eminently a matter for him.
v) An appeal court can therefore set aside a judgment on the basis that the judge failed to give the evidence a balanced consideration only if the judge's conclusion was rationally insupportable.
vi) Reasons for judgment will always be capable of having been better expressed. An appeal court should not subject a judgment to narrow textual analysis. Nor should it be picked over or construed as though it was a piece of legislation or a contract."
In Mr Justice Richards's judgment, "the above principles apply not just to the Hearing Officer's findings of primary fact, but also to his evaluative conclusions drawn from those primary facts (for example the degree of similarity between marks, the inherent distinctiveness of marks and the presence or absence of a 'likelihood of confusion')." Referring to the Reef Trademark case [2002] EWCA Civ 763 his lordship said that an appellate court should show "real reluctance" but not the "highest degree of reluctance" to interfere with a hearing officer's conclusions on multi-factorial assessments where the hearing officer may not have heard any cross-examination in relation to the relevant evidence. However, he reminded himself of Lady Hale's observation at para [30] of her speech in H (Sudan) v Secretary of State for the Home Department [2007] UKHL 49 "that it is probable that an expert tribunal, charged with applying the law in their specialist field, has probably got it right."
Appeals to the Appointed Person
Appeals to the appointed person in ex parte proceedings are commenced by filing Form TM55. In inter partes proceedings they are commenced by filing Form TM55P which must be accompanied by a payment of £250. In either case, rule 71 (2) of the Trade Marks Rules 2008 requires the form to be filed within 28 days beginning immediately after the date of the decision that is the subject of the appeal. Rule 70 applies to appeals to the appointed person as it does to appeals to the court. There is no need to seek permission to appeal to the appointed person against hearing officers' final decisions but it is necessary to seek leave to appeal against interim decisions.
Referrals to the Court
Although the appellant has the first choice as to whether an appeal is made to the court or to the appointed person, the respondent may ask the appointed person to refer the appeal to the court pursuant to s.76 (3). The appointed person may also refer the appeal to the court if it appears to him or her that a point of general legal importance is involved or if the hearing officer requests the appeal to be so referred. Rule 72 (1) requires any request by the respondent or the hearing officer to refer the appeal to the court to be made within 28 days of service of the notice of appeal on the respondent.
S.76 (3) requires the hearing officer to give the appellant and any other party to the appeal an opportunity to make representations as to whether the appeal should be referred to the court. Rule 72 (4) allows such party 28 days in which to make representations where a request has been made by the respondent or hearing officer. Rule 72 (6) also allows the parties 28 days in which to make representations as to whether the appeal should be referred to the court.
If the appointed person decides to refer the appeal to the High Court, para 25.2 of the Part 63 Practice Direction requires the appellant to file a claim form seeking the court's determination of the appeal within 14 days of receiving notification of the decision to refer. Should the appellant fail to do so the appeal will be deemed to be abandoned pursuant to para 25.3.
Hearings before the Appointed Person
The approach of appointed persons to the hearing of appeals is not materially different from that of the courts. It was summarized by Daniel Alexander QC at para [52] of his judgment in Talk for Learning BL O/017/17 on 17 Jan 2017:
"Drawing these threads together, so far as relevant for the present case, the
principles can therefore be summarized as follows.
(i) Appeals to the Appointed Person are limited to a review of the decision of the Registrar (CPR 52.11). The Appointed Person will overturn a decision of the
Registrar if, but only if, it is wrong (Patents Act 1977, CPR 52.11).
(ii) The approach required depends on the nature of decision in question
(REEF). There is spectrum of appropriate respect for the Registrar’s
determination depending on the nature of the decision. At one end of the
spectrum are decisions of primary fact reached after an evaluation of oral
evidence where credibility is in issue and purely discretionary decisions.
Further along the spectrum are multi-factorial decisions often dependent on
inferences and an analysis of documentary material (REEF, DuPont).
(iii) In the case of conclusions on primary facts it is only in a rare case, such as
where that conclusion was one for which there was no evidence in support,
which was based on a misunderstanding of the evidence, or which no
reasonable judge could have reached, that the Appointed Person should
interfere with it (Re: B and others).
(iv) In the case of a multifactorial assessment or evaluation, the Appointed
Person should show a real reluctance, but not the very highest degree of
reluctance, to interfere in the absence of a distinct and material error of
principle. Special caution is required before overturning such decisions. In
particular, where an Appointed Person has doubts as to whether the Registrar was right, he or she should consider with particular care whether
the decision really was wrong or whether it is just not one which the
appellate court would have made in a situation where reasonable people may
differ as to the outcome of such a multifactorial evaluation (REEF, BUD,
Fine & Country and others).
(v) Situations where the Registrar’s decision will be treated as wrong
encompass those in which a decision is
(a) unsupportable,
(b) simply wrong
(c) where the view expressed by the Registrar is one about which the
Appointed Person is doubtful but, on balance, concludes was wrong.
It is
not necessary for the degree of error to be “clearly” or “plainly” wrong to
warrant appellate interference but mere doubt about the decision will not
suffice. However, in the case of a doubtful decision, if and only if, after
anxious consideration, the Appointed Person adheres to his or her view that
the Registrar's decision was wrong, should the appeal be allowed (Re: B).
(vi) The Appointed Person should not treat a decision as containing an error of
principle simply because of a belief that the decision could have been better
expressed. Appellate courts should not rush to find misdirections warranting
reversal simply because they might have reached a different conclusion on the
facts or expressed themselves differently. Moreover, in evaluating the
evidence the Appointed Person is entitled to assume, absent good reason to the
contrary, that the Registrar has taken all of the evidence into account. (REEF,
Henderson and others)."
Conclusion
It is nearly 30 years since appeals to appointed persons in trade mark cases were introduced and the general view among IP practitioners is that the arrangement has worked well. Provision was made for appeals to an appointed person in registered design cases by s.10 (2) of the Intellectual Property Act 2014. Considerable thought should be given as to the prudence of an appeal because it is not easy to succeed before the court or the appointed person. As there does not seem to be much difference in the quality of their decisions, the advantages of speed, finality and predictability of costs would incline me to the appointed persons' route unless there was an important point of law upon which it was essential to obtain clarity from the highest possible judicial authority.
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