UK IPO Trade Mark Proceedings - Beyond the Basics

Introduction

This new full day course will provide you with an opportunity to explore both ex parte and inter partes (contested) trade mark proceedings before the UK Intellectual Property Office.

Examples of UK IPO forms and witness statements, especially in relation to oppositions and use, will be referred to and discussed during the course.

Assuming a good working knowledge of UK trade mark law and practice, this course is aimed at both trade mark attorneys and solicitors.

What You Will Learn

This course will cover the following:

• The sorts of trade mark proceedings that can be brought before UK IPO
• The current state of the IPO’s ‘One IPO Transformation’ programme - trade marks are being brought within the programme for users from 2025
• Importance of TPNs (‘Tribunal Practice Notices’). A detailed consideration of the practical issues raised by a number of TPNs, including TPN 1/2024 issued in mid-July 2024
• A guide to the stages of an opposition: who is entitled to oppose, how to extend the time for filing, how to fill and complete the correct forms, the sort of evidence typically required
• The requirements as to the filing and presentation of evidence and other documents. The strict limitations as to the volume that can be filed without prior permission; timely provision of skeletons; and the need for advance details of those attending UK IPO Tribunal hearings
• ‘Fast track’ oppositions - the process and limitations discussed
• Acceptability of proposed restrictions during an opposition - a new and higher threshold?
• How to present effective evidence of use
• Confidentiality of correspondence and evidence in IPO proceedings
• The vexed issue of time limits and when extensions of time should, or should not, be granted
• Position of undefended applications, abandonment and failure to file evidence or other required details in time or at all
• Survey evidence: the IPO’s practice and procedure on seeking leave to adduce survey evidence. Might court practice and procedure act as a useful pointer?
• Cross-examination - are there really any restrictions on its scope?
• Scale costs in inter-partes proceedings. Are ‘off-scale’ costs available, and if so, in what circumstances?
• Appeals from UK IPO decisions - appointed person or court?
• A brief outline of the practice, procedure and costs of the Company Names Tribunal (‘CNT’) - a potential ‘alternative’ to UK IPO Proceedings?