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Stricter rules on filing of evidence in trade mark hearings

Print publication

10/04/2015

The practice note has been published to meet concerns that parties to hearings before the Registrar are filing large volumes of irrelevant or unnecessary evidence, adding to the cost of proceedings and taking up a disproportionate share of resources. The practice note gives as an illustration of this a recent analysis of 27 trade mark opposition and cancellation proceedings, where five cases had over 900 pages of evidence, much of which was irrelevant or unnecessary.

The practice note says that the following limits should suffice and that if they are likely to be exceeded, the party should either review its evidence or seek directions:

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

These limits refer to evidence only and do not include written submissions.

If the Registrar finds that the above limits have been exceeded without the party concerned seeking directions, a Case Management Conference will be appointed at which the Hearing Officer will review the evidence and exercise the Registrar’s powers to determine whether the (proposed) evidence goes to issues on which evidence is required. If the Hearing Officer considers that the evidence may be relevant, he may give directions as to the form in which the evidence is placed before the Registrar. If he considers that that the evidence is not relevant, he may exclude it.

The practice note also includes guidance for parties regarding the filing of evidence:

  • 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 two pages are relevant
  • similarly, it is not necessary to file the whole of a company’s annual report if just the front cover and a few relevant pages will suffice
  • it is not appropriate to file the results of searches of trade mark registers showing that other marks 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 as evidence of a likelihood of confusion.

The practice note comes into effect with respect of any evidence due to be filed on or after 30 April 2015.