The UK IPO has published a new practice amendment notice, PAN 02/09, concerning the "Procedure Governing the Appointment of Ex Parte Hearings". The new PAN, a rather voluminous but helpfully detailed document, is set out below.

Left: busy studying the new PAN (Picture by Hans de Beer)

"1. Following the abolition of ex officio refusal under relative grounds, the number of requests for ex parte trade mark hearings since October 2007 has dropped significantly. Over the same period of time, the Registrar has also noted an increase in the numbers of prearranged in-person London hearings which are being postponed or cancelled at the attorney or applicant's request. As a result, the Registrar is introducing procedures to encourage the use of telephone and video conference facilities for ex parte hearings, and to minimise disruptions to its London hearing schedules. (...)

Background

2. Introduction of The Trade Marks (Relative Grounds) Order 2007 had an obvious effect upon the number of substantive objections being raised at examination stage, which in turn has had an effect on the number of ex parte hearings being requested (the numbers for 2008 were over 20% lower in comparison to 2007). (...)

3. As with all Government departments, the Intellectual Property Office has to achieve a carbon reduction target of 12.5% by 2010. (...)

4. To reflect these considerations, the Registrar now intends to adopt a more intelligent policy towards travel between the Newport and London offices by significantly reducing the number of in-person ex parte hearings held at Harmsworth House. (...).

Arranging the hearing

5. On receipt of an ex parte hearing request, the hearings clerk will contact the
applicant/attorney to arrange a suitable date and time. Under the new procedure,
the default appointment in all cases will be for a telephone hearing.

6. In line with Rule 63(2) of the Trade Marks Rules 2008, the applicant/ attorney is able to request at least fourteen days' notice from the date on which first contact with the hearing officer is made. Due to the increased flexibility which telephone hearings provide, the Registrar will strive to be as accommodating as possible when discussing and arranging a suitable appointment. If the applicant/ attorney consents to a shorter period of notice and wishes to have the hearing within the initial fourteen day period (whilst still allowing reasonable time for any preparatory work to be undertaken), then the hearings clerk will make every effort to meet such a request.

7. The hearings clerk will be expected to make every reasonable effort to contact the applicant/attorney in order to discuss the hearing and/or arrange a suitable date and time. First contact will always be via the daytime telephone number provided by the applicant/attorney on the trade mark application form. Where the clerk is unable to establish telephone contact having made every effort to do so, a letter will be sent to the address for service held on record. This letter will make reference to the Registrar’s unsuccessful attempts to establish telephone contact, and will invite the applicant or attorney to make contact as soon as possible in order to discuss their preferred hearing arrangements. A period of seven days from the date of the letter will be allowed for the applicant or attorney to make contact. Where the hearings clerk has not had any response on expiry of that seven day period, a further official letter will then be issued informing the applicant or attorney that a telephone hearing has been scheduled on their behalf. This letter will contain details of the date and time for the hearing, and the applicant/attorney will be expected to be available on the arranged date and time via the telephone number already provided.

Use of video conference facilities

8. If the applicant/attorney would prefer to use the video conference facility offered at Harmsworth House in London, this should be conveyed to the hearings clerk on first contact. As there is already a reasonable level of take- up for the video conference facility (most notably in inter partes trade mark proceedings), we may not be able to agree to your first choice of date and time. However, as with telephone hearings, the hearings clerk will aim to be as accommodating as possible.

9. At present, the majority of Counsel hearings dealing with ex parte matters take place in-person at Harmsworth House. In future, the Registrar will direct that the video conference facilities provided at Newport and London should be used for all such Counsel hearings.

10. Where an applicant/attorney has its own video conference facilities and would prefer to use these as an alternative to visiting Harmsworth House, the Registrar will be receptive to such a request. In such circumstances, the applicant or attorney should inform the hearings clerk as soon as possible.

Requests for in-person ex parte hearings outside of Newport

11. As the default arrangement will now be for a telephone hearing, any applicant or attorney who wishes to have an in-person hearing (either in London or at one of our regional bases outside of Newport) will have to provide compelling reasons as to why such an appointment is necessary. The Registrar notes that in some cases, most notably where complex evidence of use has been filed and where an attorney or applicant wishes to make reference to such materials, an in-person hearing may be more applicable than a hearing by telephone or video-link. However, the Registrar anticipates that in most cases, a telephone or video conference hearing will be sufficient to meet the needs of the applicant or attorney and the hearing officer, and to fulfil the statutory requirements as set out in Rule 63 of the Trade Marks Rules 2008. It is to be noted that many inter partes hearings, involving submissions and evidence from two parties, now routinely take place over the video link.

12. Any attorney or applicant who wishes to attend an in-person hearing rather than use the telephone or video conference facility should present its reasons, in writing, at the time of making the initial request to be heard.

13. Where the reasons for requesting an in-person London hearing are deemed by the hearing officer to be persuasive, the hearings clerk will contact the applicant or attorney by telephone, and offer two available dates for the hearing. The applicant/attorney will be expected to pick one of these two dates.

Requests for in-person ex parte hearings at Newport office

14. Although there is at present a much lower take-up for in-person hearings at Newport, these premises are available as an alternative to Harmsworth House. As with telephone and video conference hearings, the hearings clerk will aim to be as accommodating as possible when booking dates and times at Newport.

Requests to postpone, amend, or cancel a pre-arranged hearing appointment

15. In the case of all ex parte hearings, the Registrar will expect attorneys and applicants to honour the arrangements already made with the hearing clerk, and make every effort to attend on the agreed date at the agreed time. Where an applicant or attorney wishes to cancel or postpone a hearing and provides compelling reasons for making such a request, the Registrar may be willing to use discretion and agree to the request. However, where the Registrar has previously agreed to an in-person hearing outside of Newport, and the applicant or attorney has subsequently requested a postponement, any rearranged hearing will be held via the telephone.

16. Where an applicant or attorney fails to attend an in-person hearing or, in the case of a telephone arrangement, where the hearing officer is unable to establish contact at the scheduled time, and where no advance notice or warning has been provided, the hearing officer may direct that a decision be issued from the papers held on file.

Additional information

17. Applicants and attorneys should note that all of the procedures set out above are applicable to both in-person ex parte hearings held in London and those intended to be heard at our regional bases including Glasgow, Birmingham, and Manchester.

18. None of the procedures set out in this notice affect, alter or replace guidance already set out in Practice Amendment Notice 1/01 "The Conduct of Ex Parte Hearings" (Class 46, please click here to read PAN1/01, The Conduct of Ex Parte Hearings).

"I refer to your question on PAN 02/09 "Procedure Governing the Appointment of Ex Parte Hearings", specifically in reference to the distinction between hearings held at the Newport and London offices.

I can confirm that persuasive reasons will need to be submitted in support of requests for in-person hearings outside of Newport. This includes our primary in-person hearing base of Harmsworth House, London (soon changing to new offices in Bloomsbury), but also includes our regional bases of Manchester, Birmingham and Glasgow.

The Registrar will be prepared to appoint hearings in Newport without the need for compelling reasons. However, the Registrar wishes to encourage take-up of telephone and video conference hearings in all cases - irrespective of an applicant/agent's geographical location or proximity to the Newport office - primarily because it is felt that, in the vast majority of cases, these methods provide a more than adequate means of facilitating an effective hearing."