Trade Marks Registry
How to prepare for a trade mark hearing (Ex-Parte)
What is a hearing?
A hearing is your opportunity to explain to us why we should accept your trade mark application. Although a hearing
has proper legal status, we try to keep them informal. We know that for many people this may be the first time they
have tried to register a trade mark, and we want to help as much as we can. Legally, this type of hearing is called an
‘ex parte’ hearing, that is, a law suit involving one side only - in this case, you as the applicant for a trade mark.
Why do I need one?
The examiner who dealt with your application will have raised certain objections to it in the examination report which
we sent you, and been unable to resolve these with you. They may have suggested a hearing as a possible way of
taking things forward. Hearings cannot be requested to argue against the issuing of notifications to an earlier right
holder as there is no barrier to your application proceeding on these grounds.
What will it cost?
We do not charge for a hearing.
How quickly can I get one?
We will set up a hearing within three months of your request. If you want an urgent appointment, please phone our
Hearings Clerk on 01633 811034.
How will the hearing take place?
We regularly hold hearings by telephone and video conference (video conference facilities are available free of charge
at our London office). We also hold in-person hearings at our office in Newport. We also provide for hearings via the
internet, such as SKYPE.
What should I bring?
If you have been using your trade mark for some time on your goods and services, then it might be helpful if you
can show examples of how you are using it (these can be posted to the hearing officer prior to the actual hearing).
If you can supply figures for turnover, sales or advertising of the mark, then this may also help. We can only take
account of use of your mark that took place before you sent us your application. If the Hearing Officer thinks such
evidence of use will enable your mark to be registered then you will have to provide it more legally in the form of a
Witness Statement. If appropriate, we will explain this more fully at the hearing. We also have an information leaflet
on evidence of use. Please ask the Hearings Clerk if you would like a copy.
Please note - Confidentiality of documents
We have to make all documents connected with your application available for public inspection after we have published
it in the Trade Marks Journal. If you do not want any of this information to be open to the public then you must tell
the Hearing Officer when you bring the documents to the hearing, at the same time giving your reasons. The Hearing
Officer will say whether your request can be allowed.
How long will the hearing last?
Due to the amount of work we have to deal with, we must limit hearings to no more than 30 minutes.
Intellectual Property Office is an operating name of the Patent Office
Who will be present at the hearing?
Your hearing will be before a senior official of the Trade Mark Registry. The hearing officer will have read the official
file on your application to see what issues are involved and need to be discussed at the hearing. They will be familiar
with the trade mark law necessary to deal with your application. Sometimes another official may be present at the
hearing in order to gain some experience of hearing, but in such cases we will ask you in advance in case you
have any objections. You may wish to have a friend or business partner in attendance. but you can only be legally
represented by someone else such as a solicitor, trade mark attorney or patent agent if you have already told us
through submission of a form TM33 Ex-parte. Hearings are not open to members of the public.
What will happen at the hearing?
The Hearing Officer will ask you to explain why you think we should accept your application.
They will discuss the issues with you to sort out any matters which can be dealt with there and then.
A hearing can result in one of three ways:
1.
2.
3.
The Hearing Officer may accept your arguments. If so, we will arrange for your application to be published in the Trade Marks Journal for opposition purposes in due course.
The Hearing Officer may not accept all your arguments. They will explain why not, and/or suggest ways in
which you may overcome the objections to your application. If so, they may suspend your application for up to
three months to allow you time to attend to these matters.
The Hearing Officer may think that the objections to your mark are so strong that the mark is definitely not
registrable. In this case, they will refuse your application, or invite you to withdraw it. The Hearing Officer will
normally tell you their decision at the hearing.
What happens after the hearing?
We will send you written confirmation of the hearing result within about two weeks. If we have accepted your mark,
or you have withdrawn it, you need take no further action. If we have suspended your application, you must attend
to the issues identified at the hearing within the time stated. We may allow further extensions of time beyond that, but
you will have to ask for more extensions by sending us form TM9, before the end of each period. If we have refused
your application and you do not agree with our decision, you may ask for a ‘Statement of grounds of decision’ by
sending us form TM5 with a fee (currently £100), within one month of the date of the notice to refuse. The Hearing
Officer will prepare a full written decision, explaining why the mark has been refused, including reference to relevant
trade mark law as laid down in Acts of Parliament and previously decided court cases, and we will send you a copy.
If you still wish to challenge the decision, we will advise you of your rights of appeal at the time.
Other sources of help and advice
You may obtain independent professional advice at any time by contacting either of the following:
The Institute of Trade Mark Attorneys
5th Floor, Outer Temple
222-225 Strand
LONDON
WC2R 1BA
The Chartered Institute of Patent Attorneys
95 Chancery Lane
LONDON
WC2A 1DT
Phone
020 7101 6090
Fax
020 7101 6099
Website www.itma.org.uk
Phone 020 7405 9450
Fax
020 7430 0471
Websitewww.cipa.org.uk
However, if you do decide to appoint a legal representative, you must tell us, using form TM33.
How to get to our offices
London
Newport
1st floor
Concept House
4 Abby Orchard Street
Cardiff Road
London
NP10 8QQ
SW1P 2HT
Phone 020 7034 2800 (Hearings clerk)
Phone
01633 811034 (Hearings clerk)
Nearest tube: St Jame’s Park
Nearest station: Newport (Great Western)
By road:
M4, junction 28
DDU/T200
Revised: Oct 2012