Costly opposition proceedings

November 25, 2019, By

The UK Intellectual Property Office’s (UKIPO) decision on costs O-694-19 between Retina International Ltd (Retina International) (the trade mark applicant) and Apple, Inc (Apple) (the opposing party) gives a good warning as to costs in trade mark opposition proceedings.

Hearing Officer, Mark King, ordered Retina International pay Apple the sum of £24,550 being Apple’s reasonable costs – I bet Retina International wish they saw that one coming! Well in fact perhaps it did see it coming: the main opposition hearing was scheduled to take place on 7 June 2019 but Retina International withdrew its opposition the day before.

Apple went onto claim that this conduct was an abuse of process and it should be awarded its actual costs (usually opposition costs awards are compensatory and actual).

Apple made a number of submissions during the hearing and one notable submission related to Mr Michael Gleissner who is a director of Retina International. Apple provided evidence to suggest that Gleissner’s companies account for over one third of unpaid costs orders in the UKIPO. Gleissner seems to have an expensive hobby.

In his decision, the Hearing Officer noted that it does appear that the trade mark Retina International chose was aimed at disrupting Apple and along the way the UKIPO was used as the forum to disrupt its business.

If you would like to discuss a trade mark opposition strategy and whether your use of style names could infringe third party rights, please do not hesitate to get in touch with us on [email protected] or 020 72886003 and one of our specialist IP lawyers will be happy to have a consultation with you without charge.

Written by Sam O’Toole, Solicitor

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