Should have looked closer

Kashif Syed | October 2015

Like many public bodies, the UK Intellectual Property Office (UKIPO), has various powers it may exercise to perform its functions.However, these powers are subject to limitations, and may be reviewed by the courts if they are exceeded, or exercised incorrectly.

Decisions of the UK Trade Marks Registry may be appealed to either the 'Appointed Person' (any one of a number of senior intellectual property lawyers with the power to hear such appeals) or the High Court of England and Wales.

In August 2015, a decision was issued by the Appointed Person in an appeal against a decision of the Registry. The matter in dispute was whether the Registry’s Hearing Officer had the power to review a decision he had previously made, and to issue a new one in its place.

The case in question is TWG Tea Company Pte Ltd ('TWG Tea') v Mariage Frères SA ('MF') (O-396-15).It concerned a request made by TWG Tea that an order be made allowing their sales figures to be disclosed only to the Registry and the other side’s lawyers. A Case Management Conference (CMC) was held to resolve the issue, following which, the Hearing Officer issued a decision granting the request. MF did not appeal the decision, but instead made further submissions in a letter to the Registry. After a second CMC, the Hearing Officer reversed his first decision and issued a second decision permitting both MF and its lawyers to inspect TWG Tea’s sales figures. TWG Tea appealed this decision to the Appointed Person on the grounds that the Hearing Officer had no power to review and replace his first decision with his second decision.At all stages of the proceedings, TWG Tea was represented by Ian Bartlett of Beck Greener.

Geoffrey Hobbs QC sitting as the Appointed Person concluded that it was not open to the Registrar to vary or revoke his own decisions except in situations where the decision may be considered as preliminary/provisional, or in order to rectify a procedural irregularity.

Mr. Hobbs, referring back to his own decision in Andreas Stihl AG’s Trade Mark Application [2001], emphasised the distinction between (i) deciding and re-deciding a matter, and (ii) correcting irregularities in procedure.

With respect to (i), Mr. Hobbs quoted a passage from the judgment of Sir John Donaldson MR in R v. Cripps Ex p. Muldoon [1984] taken from the decision in Andreas Stihl AG’s Trade Mark Application [2001]:

"I think it must be recognised that the Registrar’s statutory power to determine issues arising in Registry proceedings is, in principle, 'a power to decide once and once only' (Wade and Forsyth at p. 237) with the result that she can only revoke or modify a Registry determination, after it has been duly made and communicated in terms which are not preliminary or provisional, in cases where she is empowered to do so by the Act or the Rules." [Emphasis added].

In determining that the Hearing Officer's decision was final and not preliminary or provisional, Mr. Hobbs took the view that written notices sent by the Registrar to communicate a decision under Rule 69 Trade Mark Rules 2008 are equivalent to sealed orders in High Court civil proceedings. The effect of such a sealed order is that there is no jurisdiction for the court to vary the order unless it has an express power to do so.

Although a court generally has such a power, the same rules of procedure do not apply to Registry proceedings. Mr Hobbs reiterated "the undesirability of allowing litigants to have two bites at the cherry and the need to avoid undermining the concept of appeal" and emphasised that even under the Court rules of procedure it should "take something out of the ordinary to lead to variation or revocation of an order" (Rix LJ in Tibbles v. SIG Plc [2012]).

Regarding the general powers of the Registrar to give directions in the management of any proceedings as provided by the Trade Mark Rules, Mr. Hobbs also held that while this provision enables the Registrar to manage the implementation and operation of procedural orders, it does not include a general discretionary power to change his mind.

With respect to correcting irregularities in procedure, Mr. Hobbs stated that while "[I]t was, in principle, open to MF to raise a request for rectification on the ground that the decision was tainted by an irregularity in procedure of sufficient seriousness to justify setting it aside and requiring the application for a confidentiality order be determined de novo by a different hearing officer in accordance with the usual practice" (para 20), MF did not make such an application but rather made a general request to the Hearing Officer for reconsideration of his decision.

The case raises interesting questions regarding the extent of discretionary power available to the Registrar in proceedings before the Registry, and the circumstances in which the Registry may review and reconsider decisions that have been finalised. What has been made quite clear however is that once the letter recording a decision has essentially been ‘signed, sealed and delivered’ by the Registrar, then the Registrar may vary or revoke that decision only if there is an express power to do so conferred by the Trade Marks Act or Rules.

Beck Greener is very pleased with the result in this appeal, and Ian Bartlett continues to act in the case, which now continues before the Registry.