All firms face the dilemma of deciding what they can do in-house and what needs to be farmed out. Intellectual property can be a particularly difficult field to consider, since alongside traditional contentious work in the High Court, there are the potential boons of non-contentious IP registration work and contentious cases before the tribunals of the UK and European trade mark offices.
The problems often lie in trying to translate contentious experience from one setting to the particular rules and procedures of the other. I just about remember the ‘Clash of the Codes’ rugby matches where rugby union and rugby league teams faced each other – while to a non-specialist they might look like broadly the same game, those that play would suggest it is quite the contrary.
The issues that have arisen from solicitors changing codes to take on work at these tribunals tend to focus on the particularities of submitting and challenging evidence, navigating the costs scale, and the balance between submission and evidence. The following examples are from my own experience or reported cases, and, to adopt that well-known phrase, the names of the firms have been left out to protect the innocent.
In a case relating to an action to cancel a UK trade mark on the basis that it had not been used, the owner of the trade mark had put in evidence and no submissions had been made in response challenging that evidence. Unfortunately, the solicitors acting for the trade mark owner ‘offered’ their witnesses for cross-examination, whereupon the evidence fell apart and they lost the case.
In a corresponding case in Europe where the same evidence was filed and relied upon (and where cross-examination was not available), the evidence was deemed sufficient to show use. At the UK Intellectual Property Office cross-examination is not automatic, but rather must be requested and there must be good reasons to want to cross-examine.
In a separate case, evidence filed by Gucci was deemed insufficient to prove use of its mark in the UK in relation to handbags and clothing. More recently, evidence filed by Bentley Motors to demonstrate that it had used the mark ‘Bentley’ on cars in the UK was only deemed acceptable ‘with reluctance’ by the decision maker because the other side accepted that the mark had been used on cars. That either situation would arise might seem incredible in light of the clear use of these well-known marks, and this highlights the difficulties some have found in fulfilling the evidential requirements of the tribunals.
When one looks at the EU Intellectual Property Office, the issue of evidence can be even starker. While the UK tribunals tend to see evidence from representatives of the parties as being most relevant (since they are in the best position to give evidence of the use made of marks or the investment made in advertising, for example), the EUIPO follows the mindset that evidence from the parties is to be given lesser weight and needs to be supported by third-party evidence from impartial sources. The EUIPO also has strict rules about representation, so evidence submitted with a covering letter signed by a paralegal has historically been held not to be admissible on the basis that a paralegal is not able to act before the EUIPO.
The tribunals have strict rules on costs, and examples of much-reduced cost awards include the reduction of costs of almost £16,000 to £400 and the reduction of a bill of almost £93,000 for an application for summary judgment to £49,000. In the latter case, the respondent (which had made over 60 applications to revoke Apple’s trade marks for non-use in a situation of ‘collateral purpose’) did not file any submissions on the costs at all, and the reduction was simply the result of the critical eye of the decision maker. The position at the EUIPO is even stricter – legal fees are capped at €300.
Finally, there is a limited number of specialist decision makers, meaning that they have heard some arguments many, many times. In fact, the UKIPO has gone so far as to publish guidelines on the types of evidence that parties file which are of little or no value, and it has also put in place strict guidelines as to how much evidence can be filed without further leave being obtained. Given the low recoverability of legal fees, filing irrelevant or unnecessary evidence where submissions alone would suffice is ultimately wasteful.
As the lines between various legal service providers blur, the message seems to be that you should take care to establish the rules of the game – while you may be a great player of rugby union, you may want to learn the rules of rugby league before pulling on that jersey.
Aaron Wood is a chartered trade mark attorney and trade mark advocate and the owner of Wood IP