Autumn Conference: The inside take on opposition, invalidity and revocation
Drawing on her insider knowledge from the UK IPO, Heather Harrison shares her key tips on best practice for trade mark professionals.
Heather noted that “the level of professionalism and competence that we see from trade mark attorneys continues to rise”, demonstrating the high quality of work that our members consistently deliver for their clients.
Over pleading
When there are multiple registrations for the same mark., it’s best to focus on the registrations which best prove a point, for example the ones with the most obvious similarity. This is preferable to a “scattergun” approach.
Insupportable grounds
It’s crucial to not rely on hopeless grounds. For example, it would be unconvincing to present a hypothetical future situation in which a conflicting mark may tarnish the reputation of the original mark. It’s necessary to demonstrate that the conflicting mark is already an issue, not that it may become one.
Reviewing pleadings early
It’s valuable to review your pleadings at evidential stages, and to not leave this crucial step too late.
This allows for any gaps to be plugged early by identifying what pieces of evidence are still needed to support the case that you are building.
Conversely, it also allows you to be discerning with the evidence that you ultimately choose to include.
This returns to the idea of avoiding a scattergun approach: by reviewing as you go, it is possible to be more selective and strategic as to what should be presented.
Evidence
Heather pointed out how important it is to ensure that the 300 page limit on evidence submission is adhered to.
If it extends significantly beyond that point, it is likely to become repetitive if the opposition is infringing in the same way on multiple marks.
As this was put by Heather: “there are only so many times you need to see something to be persuaded of a point”
Time periods and locations
It is only appropriate to file evidence from outside of the relevant time period if your witness can explain why it has been included or why it is relevant.
For example, a screenshot taken from a website outside of the relevant period would be acceptable if it is identical in content to how the website would have looked at the correct time, but this must be made clear.
If the content has changed, resources such as Wayback Machine allow evidence to be gathered from specific dates on the internet.
In general, if reference is being made to something that happened in the past, it is pertinent to present evidence from that time.
It is also crucial that the evidence presented shows use in the relevant territory, even if the same infringements are taking place across multiple locations.
Time extensions
Only about half of the requests made for a time extension are granted in full. A further third are accepted but with a reduced length, and the rest of the requests made are rejected.
Therefore, it would not be wise to assume that any request will inevitably be accepted.
In order to maximise the likelihood of a time extension being granted, good reasons are key.
The reason given needs to be something specific to your party, rather than relying on vague generalisations.
It must specify what pieces of evidence will be gathered during the extra period of time, and demonstrate why those pieces of evidence are necessary to the case.
Confidentiality
It’s only appropriate to seek confidentiality for your body of evidence if publication of that material is going to be damaging.
It is necessary that you explain why and how this specific material being published would cause harm.
Crucially, it is not enough to simply say that it would be commercially sensitive, or to rely on the fact that it may not currently be in the public domain.
You should also consider the extent to which you can reasonably expect the sharing of your evidence to have an effect. If the information used is ten years old, it’s unlikely to be considered to be sensitive enough for confidentiality now.
Additionally, as opposed to seeking full confidentiality, it is entirely acceptable to redact sensitive details within your evidence if the redaction doesn’t undermine the evidence itself.
For example, witness names can be removed although it is sensible to include identifying details such as age and geographical location.
Similarly, individual unit prices can be redacted in favour of leaving overall sales.
Finally, it is useful to note that individual exhibits can be kept confidential and that this is more likely to be accepted than a request for confidentiality for the full body of evidence.
Submissions
Heather also noted that if there is a broad or unspecific claim about the use of trade marks for goods and services, effort should be made to consolidate this in to a more specific point.
For example, rather than simply presenting the data for overall sales, this should be broken down to show the impact in the relevant categories.
Similarly, it’s important that witnesses are able to explain why the evidence presented means what they say it means. For them to put it into their own words is far more convincing than pages of statistics.
Don’t let good points get lost in the bad ones: In order to ensure that the points which most clearly support your point come across, keep the argument and the evidence presented to support it narrow and specific.
This is also supported by using your best arguments first. In this environment, saving the best until last is not a useful strategy.
It would be unusual to need to include a list of all the marks someone owns, unless the list offers evidence about how third party marks have been used in the market.
The UK IPO’s Heather Harrison gave this talk: “Good practice on opposition, invalidity and revocation” at the 2022 CITMA Autumn Conference.