Guidance

Rectification proceedings before the Trade Marks Tribunal

Updated 18 November 2019

1. What is rectification?

Rectification is the legal procedure to correct (rectify) an error or an omission that has been made in the details of a trade mark as recorded in the Trade Marks Register.

Who can apply for rectification?

Once the trade mark has been registered, any person with ‘sufficient interest’ in the mark may apply for rectification provided that the application is not made in respect of a matter affecting the validity of the registration. A person or business for whom an error or omission in the register may have legal or economic consequences will have ‘sufficient interest’ to seek rectification.

What can be rectified?

Rectification can be used for example to correct –

• words or terms used to describe items in the list of goods or services which are self-evidently erroneous and no other party could possibly be disadvantaged by their correction
• applicant’s or proprietor’s name and/or address, which appears on the register incorrectly and, on the basis of evidence provided, was entered in error
• cases of genuine mistaken identity where the intention was always to name one person as the owner of the mark, but due to a mistake another person was named in error.

What can’t be rectified?

Rectification cannot be used for example to –

• alter the trade mark
• add to the list of goods and services for which the mark is registered or
• ask for another person to be substituted as the owner of the trade mark because they have an earlier right to the trade mark (other than the owner of a well known mark registered in the UK by an agent of the foreign owner) and/or it is alleged that the application was made in ‘bad faith’. In such cases an application for invalidity may be more appropriate.

Will the Tribunal be able to advise me on how to prosecute my case?

No, the Tribunal must remain impartial at all times although we can help you with procedural matters. Therefore, you may wish to consider obtaining professional legal advice from a trade mark, or patent attorney, or a solicitor before you make any decision on how to proceed.

Can you recommend a trade mark or patent attorney, or a solicitor?

We cannot provide any recommendation but you can contact the Chartered Institute of Trade Mark Attorneys, the Chartered Institute of Patent Attorneys), or the Law Society. Their respective websites can be found respectively.

2. What does it cost?

How can I apply for rectification and what does it cost?

If you want to rectify a trade mark registration then you must file a TM26(R) ‘Application to rectify the register’ (no fee) accompanied by a statement of grounds on which the application is made, together with any evidence to support those grounds.

What must I put in my application?

You should say

• what trade mark you want to rectify
• who is the recorded owner
• who you are
• who is your representative (if you have one)
• what is the error or omission you want to correct
• why you want to rectify the register
• how the error or omission occurred

To whom should I send the TM26(R) to?

You must send the TM26(R) by post to:

Intellectual Property Office -

Concept House
Cardiff Road,
Newport
South Wales
NP10 8QQ

3rd Floor
10 Victoria Street
London
SW1H 0NB

All other non fee bearing forms for the Tribunals can be sent to [email protected].

Do I have to send a copy of the TM26(R) to the applicant?

No, the Tribunal will send a copy of the TM26(R) to the registered owner. However, the Tribunal will not, as a matter of course, copy any other document. To ensure fairness and transparency of proceedings, it is imperative that any correspondence, including forms, sent to the Tribunal is copied to the other side and contain confirmation that it has been copied.

If parties persistently fail to copy correspondence and documents to the other side, this will be regarded as unreasonable behavior and there may be cost implications at the conclusion of the proceedings.

What happens once the TM26(R) has been received?

The Tribunal will check the TM26(R) to make sure that sufficient information has been provided for the rectification action to proceed. If further clarification is required the Tribunal will write to the applicant and allow a short period of time to clarify the grounds of rectification.

When will the registered owner know that I have submitted a TM26(R)?

Once the formalities check has been concluded, the Tribunal will serve the TM26(R) on the registered owner and give directions for the parties to file evidence and/or submissions.

3. Evidence in rectification proceedings

What happens if the registered owner does not file any evidence or submissions?

If no evidence or submissions are submitted within the period allowed, the Tribunal may treat the registered owner as not opposing the application and will decide whether to allow or refuse the application for rectification of the registered trade mark.

What evidence do I need to file?

As this is a matter for the parties to decide, the Tribunal will not provide advice on the content of evidence. However, the Tribunal does have the power to require parties to file evidence covering particular issues. If the Tribunal decides to exercise these powers, you will receive a direction in writing telling what must be covered in your evidence.

How should I present my evidence?

Evidence is normally given in the form of a witness statement, though the Tribunal may order that it should be provided by way of an affidavit or statutory declaration.

What is a witness statement?

A witness statement is a legal document setting out the facts of the case as the person making the statement believes them to be. The information provided must be based on the witness’ own personal knowledge; it should stick to the point and only cover facts which are relevant to the application for rectification.

The witness statement must clearly identify the proceedings; the witness must give his full name and address; it must be signed, dated and include a statement of truth.

Do I attach any exhibits to the witness statement?

Any exhibits filed with the witness statement must be clearly identified and referenced with the initials of the witness and numbered sequentially. For example, a witness statement submitted by John Smith with three exhibits would be referred to as JS1, JS2 and JS3.

Each exhibit must have a header sheet which clearly identifies the case reference number and also the exhibit. For example, ‘This is exhibit JS1 referred to in the witness statement made by John Smith dated this…day of…2012.

Do I have to number all of the exhibits?

All individual exhibits of more than 4 pages must be numbered and any evidence submitted with unnumbered pages will be returned. The page number should be applied to the bottom right hand corner of each page.

Does a witness statement have to be sworn under oath?

No, but it must be signed by the person making it and it must include a statement of truth.

What is a statement of truth?

A statement of truth is a statement signed by the witness to verify that the contents of the witness statement are true. It is worded ‘I believe that the contents of this statement are true’. Failure to provide a statement of truth will result in the witness statement being returned.

What happens if a party does not wish to submit any evidence of facts?

If a party does not wish to file evidence of facts but merely wishes to comment on the other side’s evidence or challenge its validity, then this can be presented as a written submission in the form of a letter.

You must send a copy of your evidence, or written submissions, to the other side in the proceedings.

Can the time period for submitting evidence be extended?

The period allowed is considered as sufficient in most cases, however the Tribunal may in exceptional circumstances extend the time periods for filing evidence.

Can I send my evidence attached to an email?

Yes, but any evidence must be filed in a standard accessible format e.g. Windows® Media compatible.

How can I apply for an extension of time?

A request for additional time to submit evidence beyond that which you have been allowed should be made before the expiry of the relevant time period by submitting a TM9 ‘Request for an extension of time’ accompanied by a £100 fee.

What do I need to do?

Any request must be fully supported with reasons as to why the additional time is needed. The request must explain what has already been done to date; what is left to do; what has prevented you from filing the evidence in time; and how much additional time is required. In the event that the request has been made after the set time period has expired, full and detailed reasons for the delay in making the request must also be provided.

What happens after the TM9 has been received?

On receipt of a properly filed TM9, the Tribunal will make a preliminary decision on whether to allow or refuse it. The Tribunal may on occasions decide that the amount of time requested is too long but may allow a shorter period of time. The parties will be informed in writing and a period of fourteen days will be allowed for either party to challenge the decision and request a procedural hearing. Unless a party objects to the preliminary view, and provides written reasons for doing so, the Tribunal’s decision will be implemented.

What is a stay of proceedings?

If once the evidential stages have begun the parties wish to seek a negotiated settlement, they can make a joint request in writing to stay, or suspend, the proceedings.

What must the parties do when requesting a stay?

The parties will have to provide the Tribunal with full reasons to support the request and where settlement negotiations have already started, details of any action, together with dates, must be provided. The parties are not expected to provide the Tribunal with confidential or without prejudice material, but the Tribunal must be satisfied that serious progress is being made towards a settlement. The parties will be expected to explain whether the time requested is merely to resolve minor issues or whether there exists serious barriers to an amicable resolution. In addition, the parties must provide a realistic assessment of when they expect a conclusion to the negotiations.

What is ‘Without Prejudice’ material?

The term without prejudice is used when one side to a dispute makes a statement to the other side intended to settle the dispute.

If documents containing such statements are filed, the Tribunal will return them and state that they cannot be taken into account.

When will I know the outcome of the rectification?

Once the periods for filing evidence or submissions are complete, the parties will be invited to file final submissions or request a hearing. The Tribunal will indicate whether it believes that a hearing is necessary. It remains open to either party to request a hearing.

Following either a full review of the papers on file, or a hearing, the Hearing Officer will issue a decision in writing. The decision will explain the background to the case and why the Hearing Officer has reached his decision. It will also refer to the relevant trade mark law and legal authorities. It may also include an order that one side should pay a contribution to the costs to the other.

What is a Hearing?

A party has a right to be heard before any adverse decision is taken against them. The person who decides the case is called a ‘Hearing Officer’.

There are three types of hearings which may occur during the course of proceedings. These are Procedural Hearings, Case Management Conferences and Substantive Hearings.

What is a Procedural Hearing?

Where procedural disagreements arise and a party will not accept the Tribunal’s preliminary view on the matter, a Procedural Hearing may be requested to resolve the issue. Examples of matters which are resolved at such a hearing are the admissibility of the rectification.

What is a Case Management Conference?

A Case Management Conference (CMC), is a hearing appointed by the Tribunal to decide what needs to be done on a case and by whom. If procedural disagreements arise after a defence has been filed, the matter will usually be resolved by holding a CMC. Examples of matters resolved at such a hearing would be extension of time requests, whether cases should be consolidated (joined together), confidentiality orders, suspension of proceedings, and the cross-examination of witnesses.

At the CMC, the Hearing Officers will use their wide case management powers to make appropriate directions to the parties covering all aspects of the future management of the case. Such directions may include the setting of a timetable and structured framework to ensure that the proceedings are concluded within a timely manner whilst keeping costs to a minimum.

What is a Main Hearing?

The Main Hearing will deal with the substantive issue of the dispute.

Do I have to attend the hearing in person?

No, though you may want someone to attend on your behalf e.g. a Trade Mark Attorney. If no one attends you may instead rely on written submissions which are submitted before the hearing and copied to the other side. Hearings are generally held via a video conference link between our London and Newport offices, or on the telephone. In certain circumstances, when for example cross-examination of a witness has been requested, we can arrange for a hearing to be held in person in either London or Newport. Hearings are taken by Hearing Officers who have delegated powers to act on behalf of the Registrar.

4. How to appeal the hearing officer’s decision

What happens at a hearing?

Each party attending will have the opportunity to put their case to the Hearing Officer. The Hearing Officer will ask any questions he or she has.

What does it cost?

There is no charge for a hearing.

However, the successful party may make a claim for an award of costs to be given in its favour. Any costs awarded in proceedings before the Tribunal will not cover all the costs of the proceedings and are only intended to provide a contribution towards the costs of the successful party.

Can I challenge the Hearing Officer’s decision?

If either party feels that in reaching his decision, the Hearing Officer has made an error on a point of law, or that he or she has made an unreasonable decision on the facts, then an appeal within 28 days from the issue of the decision can be filed.

To whom do I appeal?

The appeal can be either to the Appointed Person or to the High Court.

What is an Appointed Person?

An Appointed Person is a senior intellectual property lawyer appointed by the Ministry of Justice; he or she is wholly independent of the Tribunal.

The Appointed Person offers a low cost alternative to appealing to the High Court

How do I appeal to the Appointed Person?

An appeal to the Appointed Person is made by filing a TM55 ‘Notice of appeal to the Appointed Person’ (no fee required). The notice of appeal must include the grounds of the appeal together with any relevant trade mark law and legal authorities relied upon in support of each of the grounds of appeal.

What does it cost?

There is no charge for an appeal hearing.

However, the successful party may make a claim for an award of costs to be given in its favour. Any costs awarded in proceedings before the Appeal Tribunal will not usually cover all the costs of the appeal and are only intended to provide a contribution towards the costs of the successful party.

How do I appeal to the High Court?

The procedure for making an appeal directly to the High Court is set out in the Civil Procedure Rules Part 52 for Appeals and Part 63 which relates to Intellectual Property claims.

If you appeal to the High Court you should send us a copy of your appeal and keep us informed of the outcome as the Tribunal does not play any part in those proceedings.

What does it cost?

You will need to ask the court for information on court fees and any award of costs should your appeal be unsuccessful.

Can I challenge the outcome of the appeal?

The Appointed Person is an appellate tribunal whose decision is final. Decisions by the High Court may be appealed, if the party is given leave, to the Court of Appeal.

5. Costs in rectification proceedings

Will I be able to recover all of my costs before the Tribunal or the Appointed Person?

At the conclusion of any proceedings before the Tribunal the successful party may request that an award of costs be made in its favour. There is no upper limit to the award which may be made but it is established practice that the Tribunal awards costs from an official scale. The scale reflects a variable amount for the preparation, filing and examination of forms and for the amount and relevance of any evidence filed. A party without legal representation will be fully reimbursed the cost of any official fees, but will only receive 50% of the amount from the official scale. This ensures that the unrepresented party is not overcompensated for the cost of the proceedings.

What is the scale?

The current scale may be viewed at TPN1/2023. Previous scales can be viewed on the National Archives website.

Will you enforce the costs award if the other side doesn’t pay?

No. The enforcement of any award is a matter for the successful party. An order for costs may be enforced in the same way as any order of the High Court. Failure to pay an award may result in the details of the failure to comply with the costs award being published on the IPO web site.