What decisions are binding on the UKIPO tribunal?

Generally speaking, only one in ten trade mark applications are opposed. In 2016, 61,681 trade mark applications were filed with the UK Intellectual Property Office (UKIPO) and if we presume that one in ten of these applications were opposed, that makes for a high number of applications to make their way through the UKIPO’s opposition procedure. The fact is that trade mark applications make way for new decisions and interpretations of the law.

But what previous decisions are bidding on the UKIPO’s Opposition Tribunal (Tribunal). Well, if we start from the top:

The Court of Justice of the European Union (CJEU)

The CJEU’s decisions are binding on the UKIPO’s Tribunal. The CJEU will generally hear points of law which have been referred to it by Courts of the Member States of the EU. These may be for a ‘preliminary ruling’ on a specific point of law.

For example, in the case of Sky v Skykick [2018] EWHC 155 Mr Justice Arnold referred a number of points of law to the CJEU, one of which was: Can an EU trade mark or a national trade mark registered in a Member State be declared wholly or partially invalid on the ground that some or all of the terms in the specification are lacking in sufficient clarity or precision to enable the competent authorities and third parties to determine the extent of the protection conferred by the trade mark?Â

When we find out the CJEU’s decision it will then become binding on the Tribunal. If we are honest this could have a major impact on trade mark law in the UK.

The CJEU also hears appeals from the General Court, and again the CJEU’s appeal decision will be binding on the Tribunal, which leads us nicely onto:

The General Court of the EU (GC)

Below the CJEU we have the GC and much like the CJEU, the decisions of the GC are binding on the Tribunal.

For example, in the case of La Mafia Franchises v EUIPO, T-1/17 the GC held that the mark ‘La Mafia se sienta a la mesa’ cannot be registered as a trade mark on the basis of public policy grounds. This decision is therefore binding on the Tribunal. Word of advice do not file ‘La Mafia se sienta a la mesa’ as a UK trade mark as it will likely be rejected by the UKIPO Tribunal.

UK Courts

Below the GC we have the Courts of the UK. For example the Intellectual Property Enterprise Court (IPEC) which hears cases relating to intellectual property disputes. The recent ‘LDNR’ case of Frank Industries PTY Ltd v Nike Retail BV [2018] EWHC 1893 (Ch) was heard at the IPEC. In this case Mr Justice Arnold stated “it is obvious that the average consumer would be likely to misread and/or mistype and/or mishear and/or misspeak one for the other from time to time.” This is therefore binding on the UKIPO Tribunal.

The Appointed Person (AP)

The AP is an experienced intellectual property lawyer who has been appointed by the Lord Chancellor to hear appeals from the Tribunal. The AP will decide whether the Tribunal was wrong in law when making its decision.

The AP’s decisions are not binding on the Tribunal rather it is persuasive in similar cases.

EU Member States Courts/ Tribunals

Again, much like the AP, decisions of other EU Member States Courts and Tribunals are not binding on the UKIPO Tribunal. In the case of Wagamama [1996] FSR 716, Laddie J. Held that:

“It would not be right for an English Court, if it is firmly of a different view, to follow the route adopted by the courts of another Member State simply because the other courts expressed a view first. The scope of European legislation is too important to be decided on a ‘first past the post’ basis.”

Much like a good trifle, when dealing with matters before the Tribunal it makes sense to start at the top (looking at decisions of the CJEU) and work your way down (to decisions of the AP).