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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Devil Is in the Detail in Partial Oppositions

Hearing officers are human and sometimes err. When mistakes at the top combine with an unfocused case by parties, however, the resulting trouble can be costly. The recent appeal in Giorgio Armani SpA v Sunrich Clothing Ltd. ([2010] EWHC 2939 (Ch) ) highlights special risks inherent in partial oppositions, in particular, and offers helpful guidance on how to avoid them.

Armani Gets the Chop

The case in point began when Armani SpA applied to extend its IR for the trademark AX to the UK in respect of "clothing, shoes, headgear" in Class 25.

Sunrich Clothing Ltd. opposed the designation on the basis of its earlier UK registration for AXE covering "clothing for men and boys" in Class 25. The opposition was not directed at the whole of Armani's designation, but was rather expressly limited to "clothing for men and boys". Sunrich argued that AX was similar to AXE, that the goods were identical or similar, and that there was a likelihood of confusion.

During the evidential rounds, Sunrich filed a witness statement that suggested it was opposing the whole of Armani's Class 25 claim rather than just "clothing for men and boys". Armani raised this point with the IPO, which assured Armani that the opposition would be decided only in respect of the opposed goods.

When the decision issued, however, that turned out not to be the case. The hearing officer found that the marks were similar, that the goods were identical or similar-and that the opposition succeeded against the whole of Class 25. Armani immediately wrote to the IPO pointing out that the opposition had been partial and that the hearing officer's rejection of the whole of Class 25 went further than the case brought. Armani asked for the decision to be re-issued, giving effect to the decision only in respect of the opposed goods and allowing the designation in respect of "clothing for women and girls, shoes and headgear" or alternatively for "clothing, shoes and headgear (other than clothing for men and boys)."

In spite of these submissions, the hearing officer maintained her refusal of the whole of Class 25 on the basis that all the goods in that class were at least similar to the goods for which the opponent's mark was protected. Armani therefore appealed.

Making the Cut

On appeal, the High Court upheld the hearing officer's finding that the marks were similar, that there was identity or similarity of goods, and that there was a likelihood of confusion.

It profoundly rejected, however, her finding that Armani's designation should be refused in respect of the whole of Class 25. The hearing officer's reasoning on this point had been based on a case for similarity of goods that had not in fact been pleaded. Moreover, it went beyond the scope of the matter that she had been asked to decide in the opposition, and beyond, therefore, the case which Armani had been asked to answer. Armani had, moreover, been assured at an early stage of the proceedings that the opposition would be treated as a limited opposition, which further underlined the unfairness of the hearing officer's approach.

Fundamentally, therefore, the hearing officer had been in error because she had failed to appreciate and give effect to the limited scope of the opposition in her decision. This remained so even when the mistake was pointed out to her by Armani after the decision was handed down, despite Armani having offered alternative wordings for its specification that would have given effect to the decision within the scope of the opposition.In an effort to cling to its unexpectedly broad victory, Sunrich argued that in spite of the error, the hearing officer could not in fact have decided the matter differently since she was not empowered to re-write the applicant's specification. The type of restriction that would have been necessary to give effect to the limited opposition could not be achieved by simple deletions or "blue pencilling", but rather required an amended form of wording, and Armani had not offered any such wording until after the decision had been handed down. Sunrich contended that such amendments had to be offered by an applicant during the course of opposition proceedings and, moreover, had to be offered unconditionally. That is to say, they could not be offered as wording to be used in case the opposition succeeded, but rather had to become effective immediately as irretrievable restrictions, before the outcome of the opposition became known.

The judge, however, sensed shifting ground under Sunrich's argument. He noted, in particular, that requiring an applicant to offer an unconditional restriction before a limited opposition was decided effectively amounted to giving the case away, since the applicant would then have given up its claim to the opposed goods even before it knew whether the opposition had succeeded in respect of them. 

In the judge's view, there were numerous alternative ways in which a decision in a partial opposition could give effect to its limited scope. An applicant could, for example, make a voluntary unconditional amendment during the proceedings of the type advocated by Sunrich, but the possibilities ranged all the way through to deferring the question of wording until after the substantive case had been decided, with a variety of possible stages in between. None of these required "tying the applicant down to a form of words at a stage which is unfairly premature," and the judge considered that the IPO should manage cases proactively with a view to the fair resolution of disputes, rather than deciding cases on the basis of "technicalities which give rise to absurd results."

No such fair resolution had occurred in this case, despite Armani's efforts to flag up the hearing officer's error at a stage when it could still have been corrected. The judge therefore upheld the appeal and proposed to remit the case back to the hearing officer for determination of a suitable alternative specification.

Comment

The fact that the hearing officer made a mistake in this case was unfortunate, and her failure to put it right when it was flagged up was doubly so.

However, the judge noted that Armani's conduct too fell rather short, since it could have focused more clearly in its own evidence and submissions on the fact that the opposition was only partial in scope. The lack of an oral hearing in the case, moreover, meant that Armani lost its last opportunity to apprehend and correct any misunderstanding on the part of the hearing officer as to the scope of the opposition.

Had Armani advanced its own case more clearly, it is possible that the limited scope of the opposition would have been clearer in the hearing officer's mind, and the error might have been avoided. Advancing a conditional alternative form of wording in pleadings, at a hearing or in written submissions need not have been an admission that Armani's case was weak, and it may have focused the hearing officer's mind on the proper scope of the matter in dispute. The small cost of doing so would have been vastly outweighed by the significant savings in the cost of dealing with the appeal Armani had to fight in order to save its claim to any goods in Class 25.
Following this decision, those fighting, or defending, partial oppositions would do well to ensure that their cases are properly focused and adequately made. Offering alternative conditional limitations may make sense as a means of keeping the scope of the dispute clear. Carefully focusing evidence and submissions on the specific issues raised is another way to keep the dispute within bounds.


For hearing officers, too, this decision sends an important message: IPO cases are in their hands, and active case management is becoming more and more important to the cost-effective and focused running of proceedings. Proactive IPO involvement in a case is more likely to produce a focused and fair procedure and outcome. Human error is inevitable, both for hearing officers and parties, but more and better case management is a critical step toward managing the risk.