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IP Cases & Commentary – Details

13 July 2017

SOLISPOST and SOLIS POLE: Appointed person considers costs consequences of withdrawn appeal

Fay Birch

In proceedings before the UK Intellectual Property Office (UKIPO), the hearing officer considered that two trade mark registrations for the word mark SOLISPOST were invalid as they were registered in bad faith and conflicted with earlier unregistered rights owned by the applicant for invalidity. The proprietor appealed to the appointed person, and was represented by its managing director Mr Wood.

At a hearing before the appointed person it became apparent that there was a "blind spot" in Mr Wood's approach to the legitimacy of the trade mark applications for SOLISPOST which had been filed despite Mr Wood's knowledge of the applicant's prior use of the mark SOLIS POLE in essentially the same commercial sphere. Mr Wood's view was that since the applicant for invalidity had not yet filed or registered a trade mark for SOLIS POLE they were not the legal owners of the name. During the hearing Mr Wood explained that the rules relating to unregistered trade mark rights under the Trade Marks Act 1994 (TMA) did not align with his perception of the way things should work.

Mr Wood was given the opportunity to reconsider his position and seek professional legal advice if necessary and a few days later the appeal was withdrawn.

Costs of withdrawn appeal

Statute provides that the registrar must award any party such costs as they may consider reasonable. The established practice is to refer to published scale figures which are treated as norms to be applied or departed from with greater or lesser willingness according to the nature and circumstances of the case. The award should reflect the effort and expenditure caused to the successful party and should not be inflated to impose a financial penalty on the party with responsibility for payment.

The appointed person made it clear that the published scale figures do not have the force of statute and

"They do not limit- on the contrary they are subject to- the exercise of judgement and discretion which the decision maker should bring to bear in relation to the case at hand".

Therefore, the proprietor's suggestion that there should be a blind adherence to the published scale figures could not be correct.

The appointed person accepted the applicant's view that the costs could have been avoided if Mr Wood had recognised and accepted the applicable law under the TMA in relation to prior unregistered rights at an earlier stage of the proceedings.

Indeed the hearing officer's decision outlined the applicable law and facts to such a degree that there was little room for doubt as to the invalidity of the SOLISPOST trade mark registrations. Mr Wood failed to attend the hearing before the registry which would clearly have enlightened him to his "blind spot".

Although this made the appointed person sympathetic to the applicant for Invalidity, he was careful to ensure the award of costs only reflected the effort and expenditure to which it related and did not include a financial penalty. The appointed person held a reasonable figure of costs for the proprietor to pay in relation to the withdrawn appeal was £3,000. This was to be paid in addition to the sum of £2,800 which was awarded by the hearing officer in relation to the registry proceedings. The overall sum was less than the £19,000 which the applicant said had been incurred in relation to the registry proceedings and the appeal.

In short

This case reminds us of the rules and principles which will be applied by the registry and appointed person in relation to cost awards. Although the behaviour of the paying party is to be taken into account in determining the effort and expense caused to the successful party, the award should not include a financial penalty as such.

This case equally reminds us of the difficulties a party can run into if they do not carry out a thorough common law search, in addition to a search of the trade mark registers, to discover any unregistered rights which might exist in connection with the mark which they wish to register. A failure to carry out such searches can leave trade mark registrations open to applications for invalidity filed by the owners of such earlier unregistered rights.

Case details at a glance

Jurisdiction: England & Wales
Decision level: Appointed person
Parties: Onthecase (International) Ltd and Zeta Specialist Lighting Ltd
Citation: O-192-17
Date: 18 April 2017
Decision: http://dycip.com/O-192-17

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