SUNDAY, 14 AUGUST 2011
UKIPO: Tribunal Practice Notice (2/2011) on case management of inter partes proceedings:
On 8 August 2011, the UK IPO has published Tribunal Practice Notice (2/2011) on “case management of inter partes proceedings: efficient, fair and less costly resolution of disputes before the Trade Marks Tribunal” which UK practitioners will read with interest. It can be accessed by clicking here. Please find below a selection of issues covered by this TPN (highlighting by Class 46).
Time periods: “Following the filing of a defence, the Tribunal sets and notifies the parties of the timetable for filing evidence and/or submissions (as per the periods set out in TPN 2/2010)“. Extensions of time will be the exception and “need to be fully supported with explanations as to not only what has been done to date but, more particularly, what is left to do and how long it will take to produce the evidence.” The “Tribunal will use its discretion to set time periods as it sees necessary, which may be less than the further time which the party has requested.”
TPN 2/2011 also comments on the Hearing Officers (HO) role and their wide case management powers, emphasising the HO’s power under rule 62(h) allows for part of any proceedings to be dealt with as separate proceedings and rule 62(2)) which allows for HO to refuse further time to file evidence of genuine use where it will not assist the determination of the case. TPN 2/2011 further sets out the timeframe of Case Management Conferences (CMC) stressing, inter alia, “(n)o one will be permitted to reject two dates/times”.
As regards to “stay requests”: “once parties have exited cooling-off and the proceedings have been joined (by the filing of the defence), the Tribunal will not permit an immediate stay of proceedings for further negotiations unless a) the parties can state a date, within the next month or so, by which time agreement is expected or b) the parties have agreed to mediation.”
Correspondence and telephone calls: “(to) ensure fairness and transparency of proceedings, it is imperative that each party sends a copy to the other party of all correspondence sent to the Tribunal, however seemingly trivial in nature, and indicates that a copy has been sent to the other side in its communication”. Further “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.”
Regarding “procedural issues that come before it, the Tribunal will not usually ask the other side for comments before it issues its preliminary view in writing; the Tribunal's preliminary view will become final unless a party objects to it and provides written reasons for doing so (again copied to the other side). If that happens a CMC or a procedural hearing will usually be appointed.”
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