Common Mistakes in Tribunal Actions by Senior Hearing Officer at UK IPO
Discover the pitfalls to avoid in Tribunal actions according to Allan James, a Senior Hearing Officer at UK IPO. Learn about issues such as over-pleading, challenges with evidence, hearsay, confidentiality, and more.
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Presentation Transcript
What goes wrong in Tribunal actions Allan James - Senior Hearing Officer UK IPO
Pleadings Things that go wrong Over pleading - unnecessary multiple earlier marks/rights Unnecessary grounds Hopeless/unsupportable grounds Failure to review pleadings before filing evidence
Evidence keeping it concise Difficulty in keeping evidence to 300 pages Mainly where multiple earlier marks/proof of use, unregistered rights & claims of reputation Late timing of requests for leave to file more evidence
Evidence vagueness, repetitiveness and assertion Broad and/or non-specific claims about use of TM for goods/services Difference between particularised evidence and mere assertion Large exhibits of poorly explained significance Or repetitively showing the same thing
Specific problems with evidence Undated evidence, especially internet pages Evidence showing only what the party currently uses TM for Relying on snippets revealing metadata to date evidence on web pages Providing internet search results without the actual web pages in the hits Filing evidence of use of the TM outside the UK/EU
Hearsay evidence from attorneys Probative value of evidence from persons without first-hand knowledge of facts More efficient than providing witness statement from client? Avoiding cross examination?
Evidence confidentiality Consequences of confidentiality order Test for granting orders for confidentiality Unacceptable reasons Necessary content of requests Alternatives to confidentiality order
Specific things that go wrong with submissions Wasting time on state of the register arguments Arguing goods/services are similar without saying which ones, or why Placing too much weight on the absence of cross examination Attempting to make up for gaps in evidence by asserting facts
General things that go wrong with submissions Letting good points get lost amongst, or tarnished by, bad ones Failing to narrow the issues in dispute and focus on the key grounds/issues Leaving the best argument for appeal!
Questions Allan James - Senior Hearing Officer UK IPO
