Brand Appeal

Is that right? A few (more) misunderstandings as to UK trade mark law and procedure.

Background

In the February edition of Brand Appeal, we commented that UK trade mark law and procedure is complex and nuanced, with it taking many years to ‘learn the art.’

We shared with our readers three common misunderstandings.

As a follow up, we have set out below three more misunderstandings, with the aim of helping our readers to better comprehend our laws and procedures:

Q: As we obtained a UK registered trade mark before the other side started using the same mark in the UK for the same goods, am I correct that they cannot stop us using the trade mark? Even if we started using the mark after they did?

A: In the UK, as our law currently stands, an unregistered IP rights holder may be able to prevent someone from using its registered trade mark, in trade, in the UK, even if they registered the mark as a UK trade mark before the unregistered IP right holder started using its mark in trade in the UK.

As a consequence of them using their unregistered mark in trade in the UK, they may have generated ‘goodwill’, such that if the registered trade mark owner were to start using the same (or a similar) mark it might cause a misrepresentation as to who is responsible for the goods (or services) being supplied under the mark, leading to damage and loss. This would entitle them to bring a claim against the registered trade mark owner for the tort of ‘passing off.’

The registered trade mark owner may, in turn, be able to bring a successful claim against the unregistered IP rights holder for registered trade mark – but that does not mean that the registered trade mark owner can use its mark in the UK. Merely, that it can prevent others from doing so.

Q: If I mark an email ‘without prejudice,’ or I have a conversation with the other side and tell them that what I am saying is ‘without prejudice,’ presumably they cannot tell the Court or the UK IPO what I wrote or said?

A: Case law has established that simply labelling an email or saying a conversation is “without prejudice” does not mean that it is.

In summary, the “without prejudice” rule is that communications made as part of a genuine attempt to settle a dispute cannot be relied on as evidence against the party making the communication.

For example, they might be willing to concede or admit something in order to try and resolve the dispute but would not want that admission to be disclosed to the Court or UKIPO. The idea is to encourage litigants to speak openly, knowing that if the dispute does not settle then what they admit or concede will not be used against them in the proceedings.

Thus, the email or conversation will only truly be covered by the “without prejudice” rule if it is part of a genuine attempt to settle a dispute. If, for example, it is merely a threat made against the other side, telling them to ‘stop doing something – or these will be the consequences,’ then the communication could be used as evidence against the party making the communication.

Q: If we lose at first instance before the UKIPO and we appeal, presumably we can put in new evidence to support our case, so that we win on appeal?

A: At the EUIPO, the Boards of Appeal will allow new evidence to be submitted for the first time on appeal where it is likely to be relevant to the outcome of the case, and where it is supplementing evidence which has already been filed in advance of the first instance hearing. For example, filing further evidence in support of a claim that your trade mark has been put to genuine use, or has a reputation.

However, in the UK the admission of new evidence on appeal is the exception and not the rule. You rarely get the chance to ‘improve’ on the evidence you filed before the first instance hearing. To be admitted, the new evidence must be such that it could not have been obtained with reasonable diligence for use at the first instance hearing. In the words of Lewison LJ, the first instance hearing is not a dress rehearsal. It is the first and last night of the show.

Lessons learned

Never underestimate the need to obtain specialist advice from a chartered trade mark attorney or solicitor when it comes to issues of UK trade mark law and procedure. The devil really is in the detail.