This article was first published on the IPKat Blog
The odds are not good. In the first two months of 2020 there have been 21 published decisions from the Appointed Person in the UK – that compares with just over 40 in the whole of 2019. However of those 21 appeals only 3 were successful and only 1 actually resulted in a material change to the first instance outcome.
Decisions made by the UK IPO can be appealed to the Appointed Person or to the Court. Appointed Persons are senior lawyers who are expert in IP law the majority of whom are experienced barristers. The Appointed Person is an attractive option in many cases as it offers a high quality, low cost route to appeal compared with the Court, but it should be noted that the decision of the Appointed Person is final – there is no further appeal from a decision of the Appointed Person – in contrast a decision form the Court can be appealed further.
There are two main reasons why so many appeals are unsuccessful. Firstly the quality of decision making by the UK IPO at first instance is very high and secondly many appellants appear to misunderstand the standard of the appeal process.
In relation to the standard of appeal, it is a review not a reassessment of the original decision. In the absence of obvious error the Appointed Person will not interfere with the decision and particularly neither surprise at a Hearing Officer’s conclusion, nor the fact that the Hearing Officer reached a different decision to that which the Appointed Person would have reached will justify interference in this sort of appeal. Before interference is warranted, it is necessary for the Appointed Person to be satisfied that there was a distinct and material error of principle in the decision in question or that the Hearing Officer was plainly wrong. Also it should be noted that the Appointed Person will be especially cautious about interfering with a decision which involves a value judgement on the part of the Hearing Officer. The principles set out by Daniel Alexander QC sitting as the Appointed Person in TALK FOR LEARNING Trade Mark, BL O/017/17 at para. 52 are often referred to in decisions of the Appointed Person to set out the relevant principles and these can be briefly summarised as follows:
In other words, the standard is high. If the Hearing Officer has applied the correct law (as they almost invariably do) and reached a reasonable conclusion on the evidence (as they almost invariably do) then there is no real prospect of the appeal succeeding. Appellants are often criticised – directly or indirectly – for attempting to re-run an argument on appeal that was raised with but considered and rejected by the Hearing Officer – these attempts to reargue a point where there is no obvious error, but rather a dislike of the conclusion, are generally given short shrift by the Appointed Person. In a similar vein many appeals are based primarily on the belief that the Hearing Officer’s conclusion was wrong but are unable to identify any error of principle or area where the Hearing Officer is plainly wrong.
One potential route to a successful appeal might be the Hearing Officer’s decision in the interests of procedural economy not to decide on all aspects of the case. In, say, an opposition which relies on a number of different earlier registered rights the Hearing Officer might select the “best case” of the Opponent, analyse that in detail, and if that does not succeed then the Hearing Officer might decide not to look at the other weaker rights. Also where earlier registered and unregistered rights are relied on the Hearing Officer might find for the Opponent in relation to the earlier registered rights and therefore find it unnecessary to issue a decision in relation to the other grounds of opposition. These issues are considered in BE INSPIRED GYMS O/203/19 by Daniel Alexander QC in which, in summary, he states:
The Hearing Officer’s incorrect selection of the “best case” under s5(2)(b) was the subject of a successful appeal brought by HM Publishers Holdings Limited and Macmillian Publishers Limited against applications in the name of Nature Research Society – O/080/20. In relation to the relevant part of the opposition the Opponents relied on an earlier registration of stylised mark to oppose an application to register the mark NATURE RESEARCH SOCIETY. Both the earlier registration and the opposed application covered publishing services, but the very low level of distinctive character of earlier mark led the Hearing Officer to the conclusion that there was no likelihood of direct or indirect confusion. The Hearing Officer’s conclusion related to the distinctive character of the earlier mark came from an assessment that the average consumer would believe that the word “nature research” would be seen as describing the field of activity and hence the distinctive character of the earlier mark , such that it is, must lie in the conjoining of the words and the colour contrast. Amanda Michaels, acting as the Appointed Person, did not interfere with that conclusion but agreed with the Appellant that there were other services in the opposed application which had no relevance to nature or research, such as music publishing or music recording services. By confining his analysis to the “strongest” case where the services were identical the Hearing Officer did not consider the whole of the Applicant’s specification. Ms Michaels reassessed the likelihood of confusion and rejected the application for a small number of services which had no relation to nature or research. It should be noted that whilst this aspect of the appeal was successful it did nothing to limit the Applicant’s application in so far as it concerned the publishing services of most interest to the Opponent. The Appeal also succeeded in part in relation to s5(3) as the Hearing Officer confided his analysis to the mark and did not separately consider the objection under s5(3) based on the more famous NATURE mark – in that respect the case was remitted back to the Registry.
Even if you can find an appealable error in a decision it does not follow that you will succeed in the appeal. In the Lifes Nutrients decision O/075/20 James Mellor QC accepted that the Hearing Officer made a number of material errors and particularly he was wrong to conclude that the marks and “Lifes Nutrients” were conceptually identical. The Hearing Officer took no account of the “Nutrients” element of the mark applied for in his analysis because that element was descriptive but it was wrong to ignore that element entirely and once that element was accounted for it could not be reasonably concluded that the marks are conceptually identical. In Mr Mellor’s analysis the marks were regarded as conceptually similar to an average degree. He went on to consider how this impacted the multifactorial assessment under s5(2)(b) but reached the same conclusion on indirect confusion as the Hearing Officer so the appeal failed. It is worth noting that the Hearing Officer’s conclusion regarding the conceptual identity of the marks made it easier to challenge the decision – a conclusion that marks are identical is either wrong or is right – there are no shades of grey to consider – and any difference between the mark gives the Appointed Person scope to find that the Hearing Officer was plainly wrong to conclude they were identical. In most cases the decision at first instance will give a degree of similarity, such as low, medium or high, rather than an absolute finding of identity. It is generally much harder to interfere with decisions which hang on the degrees of similarity as it is harder to show than the Hearing Officer was plainly wrong.
Phillip Johnson was the Appointed Person in the Spirit Energy case O/034/20 where the decision at first instance was successfully overturned. The Hearing Officer refused an application to register the mark SPIRIT ENERGY in a plain word and device format based on s5(3) and 5(4)(a). The opposition under s(5)(2)(b) and s3(6) failed. [You might already be raising a legal eyebrow at this decision as it is almost always the case that opposition under 5(4)(a) follows the decision under s(5)(2).] The Applicant appealed the decisions under s5(3) and 5(4)(a) and Opponent cross-appealed under s5(3), seeking this ground to be upheld on additional different grounds, and section 5(2)(b). The Hearing Officer erred in her assessment of the evidence and having carefully re-considered the evidence Mr Johnson found that the Opponent’s mark was not known by a significant part of the relevant public. In particular the evidence was without context so it was not possible to tell whether the customer numbers, turnover or promotional spend was large or small for the industry in question. This issue was compounded by the fact that the Hearing Officer did not clearly identify the relevant public and it was necessary to assume that this group was the public at large rather than a smaller group. Absent a reputation the s5(3) claim failed. In relation to s5(4)(a), the evidence did support a claim to passing off but the Hearing Officer was wrong in relation to her assessment of misrepresentation. Looking back to the “standard of appeal”, and looking at the spectrum of respect of the decision of the Hearing Officer, it is relatively unusual to find the Appointed Person interfering with the Hearing Officer’s assessment of evidence. The Applicant succeed on both grounds and the Opponent’s appeal was rejected so that the end result was the acceptance of the application which had been rejected at first instance.
The quality of decisions from the UK IPO at first instance is high as is the standard required to successfully appeal a decision. These factors combine to make it difficult to successfully appeal decisions of the UK IPO in relation to trade mark cases.
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