A Guide to Better Arguments, Evidence and Advocacy before the UKIPO and OHIM

Aaron Wood

Founder

Wood IP Limited

Version 1 – December 2015

© Aaron Wood 2015

The purpose of this work is to increase the knowledge and skills of users of the UK Intellectual Property Office and Community Trade Mark Office (OHIM) tribunals, both professional users and lay/ unrepresented parties. As a result, you are free to share this work (including copying and redistributing the whole or any part of the work) and use the material for non-commercial purposes subject to attribution. You may also use and share the work for commercial purposes in providing legal services, and may use the whole or any part of it within your own commercial publications or the provision of training to third parties subject to such publications or training being available freely and at no cost to users. For all other commercial uses please contact the author.

Please note that none of this guide represents legal advice and that separate advice should be sought in order to tailor any of the material within this guide to any particular set of facts.

Introduction Disputes between the owners of trade marks are time-consuming, sometimes complex and often costly. Both the UK Intellectual Property Office and the Office for Harmonisation in the Internal Market (referred to in this work as “OHIM” and being the body responsible for the registration of European Community Trade Marks and the handling of disputes pertaining to the registrability of Community Trade Marks) have procedures which mirror the structure of traditional legal disputes, but both hide within them traps for the unassuming and have restricted regimes for recovery of the time spent on the case. As a result of this, it is easy for the costs to extend far beyond that which is recoverable, or for the particularities to surprise a party.

It is also the case that an increasing number of parties are unrepresented, having filed applications without professional assistance or having used businesses that can handle the administration connected with filing a trade mark application and processing it through to registration, but have no ability to handle disputes when they arise. For the unrepresented party, these proceedings are unusual and mistakes are easily made; for the represented party on the other side, the natural extension of fairness to the unrepresented party by the authorities can be frustrating since it may add time and cost.

The purpose of this guide is to assist all users. It is my hope that it will be of service to stakeholders of all kinds. I hope it will provide a framework for understanding how to present a case for those with no legal training, and some tips of how to present a case in a more cost-effective manner to those with some experience before these bodies.

If you have benefitted from this document as an IP-specialist then my main request to you is that you share it. Please make it available to those who might benefit, including unrepresented parties you may appear against. Whilst it may seem strange to assist the other side by providing them with a guide as to how they may improve their case, by reading and understanding the principles and rules it is far more likely that they will present their case in a coherent and organised fashion, and that they will only rely upon relevant evidence.

The net result of this is a case which is easier for all to understand and evidence which can be readily understood, reducing the (otherwise unrecoverable) cost to your own client. You will see in the copyright notice on the title page that I have given quite open rights to reproduce this work if it helps you – I just ask that you attribute the work and don’t seek to take advantage of it for direct personal gain, since to do so undermines the entire purpose of this guide.

This guide focuses on the prior planning of cases, the presentation of the initial arguments, the marshalling and presentation of evidence and the presentation of final submissions (be they oral or in writing). It is possible to look simply at the topics in isolation, but in order to understand the underlying issues I recommend that some time is spent reading the first chapter, which covers rhetoric. By understanding the principles of rhetoric you will understand why some of the later suggestions are made, and how to decide which suggestions are not right for your case. The guide also covers presentation skills for oral hearings before the UKIPO and a consideration of cross-examination of witnesses. Finally, this guide ends with a brief bibliography and some sources of further reading and training.

Chapter 1 – Rhetoric – The Art of Persuasion The Oxford English Dictionary defines rhetoric as:

The art of effective or persuasive speaking or writing, especially the exploitation of figures of speech and other compositional techniques

Aristotle suggested in Rhetoric that rhetoric consists of 3 modes of persuasion:

Of the modes of persuasion furnished by the spoken word there are three kinds. The first kind depends on the personal character of the speaker; the second on putting the audience into a certain frame of mind; the third on the proof, or apparent proof, provided by the words of the speech itself

These have been explained as the trilogy of logos, pathos and ethos. Logos is the call to logic and reasoning; pathos the call to emotion; ethos the call to the credibility of the “presenter”. In the best cases “presenters” utilise all three of these modes.

1.1 Logos – The Call to Logic in Legal Reasoning

By their very nature lawyers are required to be strong logicians. Each suggestion to a decision maker that they should make a finding should be logically sound. It is important to therefore understand whether arguments which are being relied upon are simple deductive arguments, or whether they are inductive arguments.

1.1.A - Deductive Arguments

A deductive argument is one where if the premises (the statements that make up the argument) are true then the conclusion must be true. For example:

All rodents are mammals. A rat is a rodent. A rat is therefore a mammal.

(premise) (premise) (conclusion)

In order to attack the validity of a conclusion based upon deductive arguments you must attack the validity of one or more of the premises. In the example above you must either argue that it is incorrect to say that all rodents are mammals, or that it is incorrect to say that a rat is a rodent, or both. If you cannot show the falsity of a premise then the conclusion naturally follows.

1.1.B - Inductive Arguments

An inductive argument is one where the conclusion follows from the premises, but the conclusion is merely likely – ie. there is a high probability that the conclusion is correct – rather than that the conclusion being certain. For example:

Tiredness is a key cause of loss of attention for drivers and resulting accident. The driver had driven for 12 hours without a break before the accident. The accident occurred because the driver was tired.

Of course, it is possible that the accident occurred because the roads were icy, or because the brakes failed, or because the other car did not stop at the junction as it was supposed to, or because of one (or a combination) of other factors.

In order to attack the conclusion of an inductive argument you may therefore either attack the premises (ie in this case that tiredness is a key cause, or that the driver was tired) or attack the probability of the conclusion by introducing other inductive arguments (such as ice or brake failure).

1.1.C - The Issue of Misdiagnosis

One particular issue which may arise when considering cases pertaining to trade marks is a misunderstanding of whether an argument relies upon deductive or inductive arguments. If you assume incorrectly that an argument is deductive then you risk missing relevant arguments and may not present the decision maker with enough material to reach the conclusion you seek. If you misdiagnose it as an inductive argument then you will think the decision maker has a discretion which does not exist.

If we take the example of section 5(2)(a) of the Trade Marks Act 1994 we see that it states the following:

(2) A trade mark shall not be registered if because –

(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected […]

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

If we consider this provision we are tempted to read this as allowing the argument:

The later mark is identical with an earlier trade mark (premise). The later mark is to be registered for goods or services similar to those for which the earlier trade mark is protected(premise). There therefore exists a likelihood of confusion (deductive conclusion).

In fact, the likelihood of confusion requires a conclusion to be made which is inductive – it is one where the decision maker must decide if there is a likelihood of confusion based upon a number of factors. The provision of law provides that there are two necessary factors to succeed under 5(2)(a) – the mark must be identical and the goods or services must be similar otherwise you fail – but if all you argue are these two premises then success is not guaranteed, since the case law establishes that you must look at all relevant factors. It is, to borrow the term used by James Mellor QC in esure Insurance Ltd v Direct Line Insurance Plc [2008] EWCA Civ 842, a “soup” approach, albeit that this soup must contain certain ingredients.

1.1.D - The Issue of Misplacement of Arguments

A further block on presenting a case well is the misplacement of arguments, in other words knowing what arguments should be made, but not placing them where they are appropriate. The result of this is that the argument seems jumbled and unfocussed. Later on in this guide I present an example which shows the arguments under section 5(2) in more detail, and the simple reason for this is that

on many occasions I have seen parties arguing about concepts in the wrong place. Not only does misplacement remove a logical argument from where it is required, it also reduces the clarity and strength of the arguments in the section where the concept has been misplaced. If the decision maker wants to see your argument on a particular point, they will anticipate finding it in the place that it should be. If it is not there it is possible that the decision maker will conclude that you have not addressed the point at all, and they may conclude from your silence that the issue is in the other side’s favour.

1.2 Pathos – The Call to Emotion

The call to emotion means no more in this context that the outcome should feel the just outcome. The level to which a decision maker starts with the just outcome and works back to justify it in law is arguable in some cases, but in a number of cases the call to emotion is essential. It is true to say that under section 5(1) of the Act there is simple logical argument (is there identity in both the marks and the goods/services), but in many situations based upon inductive reasoning I suggest that the decision maker is not wholly ignorant of the surrounding facts (if presented well) and that this may have an effect (perhaps imperceptible) on the conclusions.

In relation to the UKIPO it is important to note that an appeal of the first-level decision is by way of a review of the decision. This means that if you want to appeal on the facts you must persuade the appellate decision-maker that the earlier decision is not one the decision maker was entitled to come to. Where a conclusion is based on an inductive argument (often described in the case law as “multi-factorial”) it will usually be the case that an earlier decision is one that could be made so long as the decision maker took account of all the facts and no irrelevant facts (ie. the correct premises). A small imperceptible nudge via a call to emotion may make a difference.

To be clear, this is not an invitation to throw yourself onto the good graces of the decision maker and plead for mercy in the absence of logical argument, nor to fill up pages of evidence with a long and complex backstory which bears no relation to the case. It simply means that the decision maker should understand the context of the dispute and your “frame” of understanding. Experienced advisors will understand how much backstory to place in the case (and where to place it) to make the case memorable in the right way and the conclusion seem right. This is in many ways the same balance a scriptwriter must strike in backstory and action when writing a film. At the end of this guide there are a number of references to works and interesting individuals who may help you decide how best to present story, and I also make further references throughout this guide.

1.3 Pathos – The Call to Credibility

The call to credibility is one which takes in all manner of trust and incorporates the bona fides and likeability of the “presenter”. Where a legal argument is deductive and the premises are clearly filled then the importance of pathos may be reduced since the decision maker is forced to a conclusion by the law. In contrast, where a balance of factors occurs (such as in an inductive argument) or where the decision maker must weigh up the value of statements or evidence, the credibility of the communication matters.

The issues that contribute to credibility are no mystery, and are no different than those we encounter dealing with people in our daily lives. We are more likely to believe those people who:

Are straightforward Are polite Answer questions directly and (seemingly) truthfully Do not abuse emotion Have expertise Are willing to accept they are not experts Are willing to concede where it is clear they are wrong Are consistent Are fair

We are less likely to believe those who:

Are shown to have lied Exaggerate Profess to answer on areas outside their field of knowledge Are inconsistent Are argumentative or abusive Are unwilling to concede even where it is clear they cannot be right Are biased Are irrationally emotive

It is worth noting that these relate to representatives and their submissions as much as witnesses or witness statements. If you do not lay a logical and credible basis you risk the other side and the decision maker concluding that your evidence and submissions are too biased to be accepted ie. the mental response of the other side and the decision maker is “well you would say that, wouldn’t you..” and you have no other support.

Some of the traits above are straight-forward and hopefully are self-evident (ie. don’t lie) whilst others are at the margins of how a case is presented. The issue of credibility is pervasive, particularly where a party is self-represented or retains the same representative throughout (ie. from drafting the grounds through evidence to final submissions). I will therefore seek to address issues of credibility throughout this guide.

1.4 Conclusion on The 3 Rhetoric Modes

In order to have a strong case which produces the best prospect of a positive outcome you must present a case which retains all three of these modes of persuasion:

You must keep the logical “thread” of your argument; You must keep the sympathy of the decision maker (or ensure the other side do not claim

it); and most importantly You must remain trustworthy and credible in the eyes of the decision maker

The remainder of this guide is dedicated to trying to help you fulfil all three modes.