Trade Mark Appeals to the Appointed Person

Written by Samuel O’Toole | January 23, 2024

Trade Marks

The Appointed Person is, as the name would suggest, a person appointed by the Ministry of Justice to hear and determine (in a trade mark context) appeals from the UK Intellectual Property Office (UKIPO).

The UKIPO makes a number of decisions relating to trade marks, these generally tend to fall into three categories. The first is where the examiner of the trade mark at the UKIPO refuses to accept a trade mark as it falls foul of the “absolute grounds for refusal”, for example it is a descriptive mark that is not capable of being a trade mark. The second is where a third party right owner opposes the registration of a trade mark application, the third is where a rights owner challenges a registered trade mark and seeks a declaration that the trade mark is invalid or should be revoked.

The UKIPO will typically hear these disputes and a quailed Hearing Officer will make a reasoned determination of the issue. The decisions are then published on the UKIPO website, in the case of an opposed trade mark it may then either be refused from register (for example if the Hearing Officer finds there is a conflict with a prior trade mark right) or it may be permitted to proceed to registration (in the case where the Hearing Officer dismisses the challenge brought by the prior rights holder).

There are two mechanisms to then challenge and appeal the decision of the Hearing Officer at the UKIPO. The first is by way of an appeal to the Court (spoiler: this tends to be the time consuming and costly option) and the second is by way of an appeal to the Appointed Person.

The Appointed Person is usually a senior trade mark lawyer with lots of experience in trade mark matters. They are independent of the UKIPO and have the power to hear and determine appeals from a Hearing Officer’s decision. The appeal procedure via the Appointed Person is generally a streamlined process and a cost efficient procedure. Although, be warned, unlike an appeal to the Court, the Appointed Person’s decision is final.

The appeal is undertaken as a review of the Hearing Officer’s decision. In order to overturn a Hearing Officer’s decision there needs to be “a distinct and material error of principle in the decision in question or that the Hearing Officer was wrong”. Unfortunately, a mere belief that the Hearing Officer got it wrong is not sufficient.

Following the Christmas break, the Appointed Person has been hard at work and already issued a decision in case O/0014/24. Here, Pangaea Laboratories Ltd appealed a decision of the Hearing Officer who found that Pangaea Laboratories Ltd’s trade mark had not been used and so the PANGAIA trade mark application owned by Pangaia Material Science Limited could proceed to registration. Pangaea Laboratories Ltd challenged the Hearing Officers decision on the basis that there was a failure to view PANGAIA on Pangaea Laboratories Ltd packaging as a trade mark (it was tied into an address line) and that the Hearing Officer was wrong to not infer use of the mark. Unfortunately for Pangaea Laboratories Ltd, the appeal to the Appointed Person failed.

All lawyers at Briffa are experts in trade mark oppositions, appeals and procedure. Why not get in contact if you are facing an opposition or appeal, or want to know more about your options.

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