The Trade Marks Rules 2008

Appeals

Decisions subject to appeal; section 76(1)

70.—(1) Except as otherwise expressly provided by these Rules an appeal lies from any decision of the registrar made under these Rules relating to a dispute between two or more parties in connection with a trade mark, including a decision which terminates the proceedings as regards one of the parties or a decision awarding costs to any party (“a final decision”) or a decision which is made at any point in the proceedings prior to a final decision (“an interim decision”).

(2) An interim decision (including a decision refusing leave to appeal under this paragraph) may only be appealed against independently of any appeal against a final decision with the leave of the registrar.

Appeal to person appointed; section 76

71.—(1) Notice of appeal to the person appointed under section 76 shall be filed on Form TM55 which shall include the appellant’s grounds of appeal and his case in support of the appeal.

(2) Such notice shall be filed with the registrar within the period of 28 days beginning with the date of the registrar’s decision which is the subject of the appeal (“the original decision”).

(3) The registrar shall send the notice and the statement to the person appointed.

(4) Where any person other than the appellant was a party to the proceedings before the registrar in which the original decision was made (“the respondent”), the registrar shall send to the respondent a copy of the notice and the statement and the respondent may, within the period of 21 days beginning with the date on which the notice and statement was sent, file a notice responding to the notice of appeal.

(5) The respondent’s notice shall specify any grounds on which the respondent considers the original decision should be maintained where these differ from or are additional to the grounds given by the registrar in the original decision.

(6) The registrar shall send a copy of the respondent’s notice to the person appointed and a copy to the appellant.

Determination whether appeal should be referred to court; section 76(3)

72.—(1) Within 28 days of the date on which the notice of appeal is sent to the respondent by the registrar under rule 71(4);

(a) the registrar; or

(b) any person who was a party to the proceedings in which the decision appealed against was made,

may request that the person appointed refer the appeal to the court.

(2) Where the registrar requests that the appeal be referred to the court, the registrar shall send a copy of the request to each party to the proceedings.

(3) A request under paragraph (1)(b) shall be sent to the registrar following which the registrar shall send it to the person appointed and shall send a copy of the request to any other party to the proceedings.

(4) Within 28 days of the date on which a copy of a request is sent by the registrar under paragraph (2) or (3), the person to whom it is sent may make representations as to whether the appeal should be referred to the court.

(5) In any case where it appears to the person appointed that a point of general legal importance is involved in the appeal, the person appointed shall send to the registrar and to every party to the proceedings in which the decision appealed against was made, notice to that effect.

(6) Within 28 days of the date on which a notice is sent under paragraph (5), the person to whom it was sent may make representations as to whether the appeal should be referred to the court.

Hearing and determination of appeal; section 76(4)

73.—(1) Where the person appointed does not refer the appeal to the court, the person appointed shall send written notice of the time and place appointed for the oral hearing of the appeal—

(a) where no person other than the appellant was a party to the proceedings in which the decision appealed against was made, to the registrar and to the appellant; and

(b) in any other case, to the registrar and to each person who was a party to those proceedings.

(2) The person appointed shall send the notice at least fourteen days before the time appointed for the oral hearing.

(3) If all the persons notified under paragraph (1) inform the person appointed that they do not wish to make oral representations then—

(a) the person appointed may hear and determine the case on the basis of any written representations; and

(b) the time and place appointed for the oral hearing may be vacated.

(4) Rules 62, 65, 67 and 68 shall apply to the person appointed and to proceedings before the person appointed as they apply to the registrar and to proceedings before the registrar.

(5) If there is an oral hearing of the appeal then rule 66 shall apply to the person appointed and to proceedings before the person appointed as it applies to the registrar and to proceedings before the registrar.

(6) A copy of the decision of the appointed person shall be sent, with a statement of the reasons for the decision, to the registrar and to each person who was a party to the appeal.