May 15, 2015
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UNITED KINGDOM: UKIPO Limits the Amount of Evidence That Can Be Filed in Opposition and Cancellation Proceedings
The UK Intellectual Property Office (UKIPO) has published Tribunal Practice Notice (TPN) 1/2015, which came into effect on April 30, 2015. This limits the amount of evidence that can be filed in trademark proceedings before the UKIPO without permission being obtained.
This change of practice has been introduced because of the volume of evidence filed by some parties in opposition and cancellation proceedings before the UKIPO. The TPN notes that in several recent cases, parties had filed over 1,000 pages of evidence, much of which was deemed to be irrelevant and unnecessary.
The TPN gives guidance on the types of evidence that, in most cases, is unlikely to be needed. For example, the TPN states that a company’s full annual report shouldn’t be filed if only a few pages are needed, and that it is never appropriate to file copies of hundreds of Internet pages without a proper explanation of what they show.
Under the new practice, all evidence filed on or after April 30, 2015, must include a maximum of 300 pages, with this limit falling to 150 pages for evidence in reply. These limits do not include written submissions filed with evidence.
If a party wants to file more than the permitted number of pages of evidence, it must attend a Case Management Conference and persuade a hearing officer that evidence beyond the permitted limit is appropriate.
If a party ignores the permitted limits, the UKIPO may decide to exclude the evidence filed or require the party to amend its evidence, and there could be severe cost consequences for the party ignoring the limits.
This change of practice should enable unnecessary costs to be avoided for both the UKIPO and parties by keeping them from having to review irrelevant evidence.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
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