No second showing
The first outing is the place to reveal all relevant evidence, says Lucy Cundliffe.  EWHC 1727 (Ch), Consolidated Developments Ltd v Cooper, High Court, 6th July 2018.
 EWHC 1727 (Ch), Consolidated Developments Ltd v Cooper, High Court, 6th July 2018
- The admission of fresh evidence on appeal should be the exception and not the rule
- The exercise of discretion in the decision to admit new evidence on appeal is a balancing act between various relevant factors
- Where the admission of new evidence would effectively result in a rehearing at first instance, the interest in ensuring finality in litigation may tip the balance against admission
This case considered the circumstances in which fresh evidence can be adduced on appeal from the Registrar at the UK IPO.
Mr Cooper was the owner of four UK trade marks, which Consolidated Developments applied to revoke on the grounds of non-use. Having considered the evidence submitted, the Hearing Officer (HO) revoked three of the registrations and maintained one in relation to a limited specification.
Mr Cooper appealed to the Appointed Person (AP). He did not directly challenge the first-instance decision, conceding that the HO had reached the correct decision on the basis of the evidence before him. Instead, Mr Cooper sought to introduce new evidence, submitting that the HO could and would have maintained the marks for a wider range of goods and services had this evidence been before him at first instance.
The AP elected to refer the matter to the High Court on the basis that the appeal raised points of general legal importance within the scope of rule 72(5) of the Trade Mark Rules 2008. Mr Justice Carr opined that the Court (or the AP) had jurisdiction to admit fresh evidence on appeal and considered the relevant authorities to identify the principles guiding the decision to exercise (or not) that discretion in trade mark appeals. Applying those principles to this case, the judge concluded that Mr Cooper’s new evidence should not be admitted and that his appeal should be dismissed.
A factor identified as particularly important in this case was that the admission of Mr Cooper’s new evidence would have required that the case be remitted to the Registry for a rehearing. The Court stressed the importance of fostering finality in litigation and the desirability of avoiding multiplicity of proceedings and delays in the Registry. This weighed heavily in the present case, especially as, in the Court’s view, the evidence sought to be adduced would not clearly have had an important influence on the outcome of the case and, in any event, could and should have been adduced at first instance (despite Mr Cooper’s accounts of his struggles with depression, which he claimed rendered him unable properly to consider at the time the evidence available to him). That said, the Court considered that the exercise of discretion is a balancing act between the various different factors, as a blanket refusal to admit evidence could also lead to injustices. Ultimately, however, the admission of new evidence on appeal should be the exception and not the rule.
The refusal to admit fresh evidence in this case is in line with the restrictive approach that has historically been applied by the courts. This decision offers practitioners a useful summary of the guiding principles governing the admissibility of fresh evidence on appeal and reiterates the importance of ensuring that all relevant, available evidence is submitted at first instance. As expressed so aptly in Fage UK Ltd v Chobani UK Ltd , and applicable by parity of reasoning to Registry proceedings: “The trial is not a dress rehearsal: it is the first and last night of the show.”
Lucy Cundliffe is a Chartered Trade Mark Attorney at Stobbs (IP) Ltd
Stobbs IP Limited