NEWSCO INSIDER LTD’S TRADE MARK APPLICATION

450 [2018] R.P.C. 10 NEWSCO INSIDER LTD’S TRADE MARK APPLICATION APPOINTED PERSON BL O-004-18; [2018] R.P.C. 10 H1 Trade marks – Human Rights – Right to a fair hearing – Appeal to Appointed Person – Preliminary issue – Respondent represented by counsel who was also appointed to sit on such appeals – Appellant not consenting to such representation – Whether possibility of perceived bias – Whether informed consent by appellant necessary – Whether to refer to the High Court under s.76(3) of the Trade Marks Act 1994 H2 This was the hearing of a preliminary issue in an appeal to the Appointed Person from a decision of the Intellectual Property Office (“IPO”) in opposition proceedings. The question was whether someone themselves appointed to decide such appeals under s.77 of the Trade Marks Act 1994 (“the 1994 Act”) could properly accept instructions and appear as counsel in contested appeal proceedings under s.76 of the 1994 Act before another Appointed Person. At first instance both parties had been represented by persons appointed under s.77 of the 1994 Act. However the appellant had since changed counsel. The Appointed Person allocated to hear the present appeal had drawn the attention of the parties to the practice that a party wishing to be represented by such a person on such an appeal should obtain the formal consent of the other party or parties to the appeal. The appellant had indicated that it did not consent in the present case. However the respondent did not accept that consent was necessary. Further, even if this was wrong, it argued that the right course was to refer the appeal to the High Court under s.76(3) of the 1994 Act. Alternatively, the respondent argued that the hearing of the present preliminary issue and/or the present application should be transferred to the High Court. The respondent accepted the explanation given for the appellant’s change of representation, namely that counsel appearing below did not considered it appropriate to appear on the appeal in the light of the concerns raised in Monroe’s Trade Mark Application1. The key question was whether appeal hearings before the Appointed Person would comply with art.6 of the Convention for the Protection of Human Rights and Fundamental Freedoms (“ECHR”) and art.47 of the Charter of Fundamental Rights of the European Union (“the Charter”), i.e. the right to a fair and public hearing by an independent and impartial tribunal, if representation by a party to such an appeal by someone themselves appointed to hear such an appeal was permitted. Both sides accepted that the common law test of bias (apparent or otherwise) was the same as the requirements for structural independence and objective impartiality under art.6 ECHR. H3 1 Munroe’s Trade Mark Application, [2009] R.P.C. 16, App. Person [2018] R.P.C., Issue 6 ß Crown copyright 2018. This article contains public sector information licensed under the Open Government Licence v3.0 (http://www. nationalarchives.gov.uk/doc/open-government-licence/version/3/) Prof. Ruth Annand: 28 December 2018 [2018] R.P.C. 10 H4 451 The Registrar had made written submissions indicating that, should a finding be made in the appellant’s favour on this issue, then the appeal should be referred to the High Court. Counsel for the respondent indicated that, should the preliminary issue be determined in the appellant’s favour and the appeal not be referred to the High Court, he would withdraw as counsel on the substantive appeal. Held, find for the appellant on the preliminary issue, H6 H7 H8 H9 (1) The Appointed Person was under an obligation to ensure that appeals under s.76 of the Trade Marks Act 1994 (“the 1994 Act“) were so far as possible determined in conformity with art. 6 of the European Convention for the Protection of Human Rights and Fundamental Freedoms (“ECHR”) and gave effect to art.47 of the Charter of Fundamental Rights of the European Union (“the Charter”). ([24], [26], [44], [61], [92]) Findlay v United Kingdom [1997] ECHR 8 (25 February 1997), ECtHR; Munroe’s Trade Mark Application, [2009] R.P.C. 16, App. Person; C-259/04 Emanuel v Continental Shelf 128 Ltd, EU:C:2006:215, [2006] E.C.R. I-3089, [2006] E.T.M.R. 56, ECJ; R (on the application of EM (Eritrea)) v Secretary of State for the Home Department [2014] UKSC 12, [2014] AC 1321, [2014] 2 WLR 409, SC; Rugby Football Union v Consolidated Information Services Limited (formerly Viagogo Ltd) [2012] UKSC 55, [2012] 1 WLR 3333, [2013] F.S.R. 23, SC and C-308/07 P Gorostiaga Atxalandabaso v European Parliament, EU:C:2009:103,[2009] E.C.R. I1059, [2009] 2 CMLR 48, ECJ, referred to. (2) The objection to the proposed representation of the respondent in the present case was systemic. There was no suggestion of any personal bias. ([34], [35]) Lawal v Northern Spirit Ltd [2003] UKHL 35, [2004] 1 All ER 187, HL and Munroe’s Trade Mark Application, [2009] R.P.C. 16, App. Person, referred to. (3) It was clear that a party could waive its right to object in situations such as the present by giving informed consent. ([42]) DECADRON Trade Mark, BL O/348/17 (21 July 2017, unreported), App. Person; Locabail (UK) Ltd v Bayfield Properties Ltd [1999] EWCA Civ 3004, [2000] QB 451, [2000] 1 All ER 65, CA, Bhardwaj v FDA [2016] EWCA Civ 800, [2016] IRLR 789, CA and Multibrands International Ltd’s Trade Mark Application (“HUNNIES”), BL O/363/17, (31 July 2017, unreported), App. Person, referred to (4) It was not acte clair that the Appointed Person appeal tribunal could objectively be viewed as independent and impartial in a situation where each and every member of that group of judges was entitled both to hear appeals sitting as a sole judge and to appear as advocate/representative for the appellant/respondent on a different occasion at an appeal hearing in front of another member of that group of judges. Had both parties not urged the Appointed Person to decide the issue, the question would have been referred to the Court of Justice for a preliminary ruling. ([46]-[49]) C-259/04 Emanuel v Continental Shelf 128 Ltd, EU:C:2006:215, [2006] E.C.R. I3089, [2006] E.T.M.R. 56, ECJ and Youdan Trophy Ltd’s Trade Mark Application, BL O/359/17 (27 July 2017, unreported), App. Person, referred to. (5) The requests to transfer to the High Court were refused: (i) they were made out of time and the Appointed Person had no power to extend the time limit; (ii) the appeal itself involved no point of general legal importance which would warrant referral; (iii) transfer would mean that the preliminary issue would simply go away and render the present exercise meaningless; and (iv) it would set a bad precedent as it would have the potential for tactical use and in certain circumstances might deny a party an [2018] R.P.C., Issue 6 ß Crown copyright 2018. This article contains public sector information licensed under the Open Government Licence v3.0 (http://www. nationalarchives.gov.uk/doc/open-government-licence/version/3/) H5 (...truncated)