On Friday 29 Oct 2011 I attended the hearing officer at Concept House, the head office of the Intellectual Property Office in Newport. My opponent attended the hearing at the IPO’s premises in Bloomsbury. Her client was at the end of a telephone in Chicago where it must have been some unearthly hour of the morning. The hearing rooms in Newport and London were connected by video link.
Newport is my venue of choice whenever I am before the Comptroller (or “the Registrar” as he or she is called in trade mark and registered design cases). Newport is approximately the same distance from Huddersfield as London, but much more convenient. The roads are less congested advocates can park just outside the main entrance. Also, an en suite room at the Travelodge at 66 Bridge Street costs the princely sum of £37.50. A similar room in WC1 would cost at least three times as much. And after the hearing there is the bonus of a drive back through the Wye Valley and Forest of Dean.
For those who do not appear regularly before its tribunals, the Chief Executive of the IPO exercises judicial as well as administrative functions. He or she resolves disputes between examiners or other IPO officials and applicants for patents and trade marks which are known as ex parte proceedings. He or she also determines disputes between applicants or proprietors of patents, trade marks, registered designs and design rights and third parties which are known as inter partes proceedings.
The Chief Executive’s jurisdiction is derived from:
- The Patents Act 1977 in relation to patents;
- The Trade Marks Act 1994 in relation to trade marks;
- The Registered Designs Act 1949 in relation to registered designs; and
- Part III of the Copyright, Designs and Patents Act 1988 in relation to unregistered design rights.
These statutes establish separate systems of tribunals for each of the above intellectual property rights. That is why the Chief Executive is known as “the Comptroller” in patent and unregistered design cases and as “the Registrar” in trade mark and registered design cases. Each of the above tribunals has its own rules that are made under the above statutes. The Chief Executive rarely exercises his judicial functions in person. Instead, a number of officials known as “hearing officers” decide cases on his or her behalf. There are different teams of hearing officers for patent and unregistered design cases and trade mark and registered design cases. Appeals from hearing officers in patent matters lie to the Patents Court. Appeals from hearing officers in trade mark officers can be made either to the Chancery Division (which includes judges who are not assigned to the Patents Court) and from there to the Court of Appeal and Supreme Court or to an experienced intellectual property practitioner known as “the appointed person” whose decision is final. Appeals in registered and unregistered designs cases lie to an appeal tribunal consisting of judges of the High Court and Court of Session.
Some of the hearing officers have trained as mediators where they offer to resolve disputes for as little as £500 per half day including room hire in Newport and £750 in Bloomsbury which is remarkable value for money (see the IPO’s leaflet “Mediation of Intellectual Property Disputes”). I have attended a mediation before a hearing officer mediator as counsel and have been very impressed. Indeed, one retired hearing officer mediator, Peter Back, is now a member of the NIPC mediation panel. Some of the trade mark hearing officers sit as adjudicators on the Company Names Tribunal which hears disputes under s.69 of the Companies Act 2006.
Although there are separate tribunals with separate sets of rules, the tribunals’ practice has been approximated by a number of Tribunal Practice Notices of which the most important are probably TPN 1/2000 Practice in Proceedings before the Comptroller and TPN 2/2000 Costs in Proceedings before the Comptroller. For more information on practice in patent and designs cases read the IPO’s Litigation and Hearings manuals. For more information on trade marks read the “Tribunal Section” in the Manual of Trade Marks Practice and the Tribunal Guidance Update.