A tool in the box for trade mark attorneys
“It’s not common to see trade mark attorneys in front of the High Court” says Ian Bartlett, “but there’s no reason they shouldn’t”.
“It’s not common to see trade mark attorneys in front of the High Court” says Ian Bartlett, “but there’s no reason they shouldn’t”.
At this year’s Autumn Conference Ian Bartlett from Beck Greener LLP discussed why it can be good option for a case to end up in front of the High Court and the different risks it could involve.
Starting a High Court appeal
To start the process, you must file within 28 days from the issue of the Hearing Officer’s decision and it must start at the Court, not the UK Intellectual Property Office (UK IPO) – but you do need to tell the UK IPO you have done so.
You don’t need permission to go to the High Court
The risks of a High Court appeal
There are bigger financial risks going to High Court, starting with a £240 court fee. “The reason it’s so much more costly is because the procedure is so much more demanding” explains Ian, “as soon as you start an appeal before the court as opposed to the Appointed Persons you start this very significant liability”.
According to Ian going to High Court can cost four to five times more compared to the Appointed Persons proceedings.
The value of the High Court
Why go to High Court if the costs are so high? Ian tells us that sometimes it can be a good technique to put pressure on opponents and that it is good if you are looking for a more authoritative decision, particularly in other territories.
Going to High Court also provides you with a chance to further appeal unlike the Appointed Persons proceedings.
How do you respond?
But what if you’re the respondent? Then what do you do?
Ian explains that if you’re content with the Hearing Officer’s decision and the order that you don’t have to do anything. However, if you want to argue that the Hearing Officer should have made the order he did on different/additional grounds, then you must file a respondent note within 14 days of the service on your Appellant’s Notice and pay the corresponding court fee.
“I think it’s important” explains Ian about the importance of trade mark attorneys accessing the High Court, “it’s a tool in the box for trade mark attorneys to know that this is available, and that your route isn’t always the appointed persons”.
Ian Bartlett is a partner Beck Greener LLP
Download Ian Bartlett's presentation:
"Why are you here?” - Appeals from the UK IPO to the High Court
Ian Bartlett broke down the key factors when raising appeals the court from the IPO tribunal.