Some like it hot

18th Jun 2021

That’s why it pays to approach every dispute with due respect, says Dewdney Drew.

The distinction between contentious and non-contentious practice is well known. We are also all aware of the difference – in intensity, shall we say – between disputes before the UK IPO and those before the courts. Perhaps underappreciated, though, are the different intensities at the IPO level, which depend on a variety of non-obvious factors.

As the rules of conflict are somewhat universal and tend to map from one arena to another, a reference to the world of combat sports may help here. Many people will not see much difference between, for example, “professional wrestling” and mixed martial arts. The term “fight” might be used loosely to describe what goes on in either of these realms. They are, however, quite different.

To extend the metaphor, consider catch wrestling. This sport, popular in the 19th century, tended to offer matches that were either very boring or brutally eventful. Given that entertaining the audience was the ultimate goal, the sport’s organisers came to the view that something closer to a “display” was what was needed – and “kayfabe” was born. Essentially play fighting with a more or less pre-agreed outcome, the sport mirrors well the steps in much of contentious practice.

A typical example would be a case involving two established corporate clients represented by established firms. Both sides will exchange initial blows (opposition and counterstatement) but will likely expect a settlement. When the settlement is negotiated, the weaker party may secure more than it would get if the opposition went to a decision – sometimes because its attorney is clever, sometimes because the attorney on the other side is polite. The negotiation of the coexistence agreement can float free of the bargaining power of the parties, and other considerations can weigh in. For example: the desire to “wrap things up”; a loss of urgency; a feeling that the agreement should be balanced and symmetrical, even if the bargaining power is not; and a tacit abandonment of further aggressive action.

However, when parties are playing for keeps, an analogy to the Brazilian street-fighting concept of Vale Tudo (“everything goes”) is more apt. And it can be a nasty shock for an attorney when what was expected to be a bout of kayfabe turns into such an anything-goes tear-up.

Game changers

Why might the rules of the game change? Often, a key difference is whether one party stands to be sued, and is likely to be sued, for infringement. Losing an opposition or invalidity in these circumstances can cause real-world problems. Contrast this to an opposition where the opponent is simply trying to prevent the dilution of its brand on the register.

Another factor is where one of the parties is an individual. Whereas a company has multiple employees working together and limited by budget, individuals take things personally and may keep fighting beyond the point at which it makes logical sense to stop. Sole practitioners can follow a similar pattern, possibly for similar reasons. The worst of all worlds might be a situation where a sole practitioner is representing an individual on a contingency fee arrangement.

When it comes to working through these “hot” disputes, there are a number of points to consider.

First, recognise what kind of dispute it is, and don’t adopt the same attitude as one might for a “nice to win” opposition. And don’t expect any consideration on issues such as extensions of time. If you request an extension in an inter partes matter, make sure that it is fully supported as per the Trade Marks Manual (Tribunal Section 4.9.1). Consider estoppel risks and don’t get cornered. If you are going to file evidence, file it properly.

Do rope in the expertise of others as needed (eg, counsel and/or specialist solicitors), and think beyond the IPO proceedings. Also, be realistic about your cost estimate, as disputes like these are not cheap. Utilise costs awards and security for costs to contain unreasonable action.

Importantly, if there is an infringement risk to your client, advise on this early and candidly, and consider cessation of usage until the risk exposure is fully assessed. If you initiated such a dispute, consider what your client stands to lose if the tide turns. Also consider the risk of adverse publicity, especially if your client is a public figure.

Be careful of without prejudice correspondence, and if possible avoid without prejudice verbal conversations altogether. There are adversaries who are happy to breach these conventions, and although the item may be inadmissible as evidence, the impression made on the Hearing Officer could be consequential. It may be better to convey such communications as individual PDFs, rather than through an email chain, as disclosing individual PDFs is less likely to happen “by accident” (chains being easier to forward). Also bear in mind the exceptions to disclosing without prejudice communications listed under Unilever v Procter & Gamble¹, and familiarise yourself with the options around disclosure at the IPO (Trade Marks Manual, Tribunal Section 4.7).

Finally, brush up on bad faith, especially around intention to use. Although it is not common, the UK IPO allows for both disclosure and cross-examination, and requests for these by a determined adversary can raise (and personalise) the stakes very quickly. Even if you expect to defeat a bad faith claim, the journey to that destination might not be one that your client is prepared to take. Following the decisions in Sky plc v Skykick UK Ltd² and Kreativni Događaji v Hasbro Inc³, consideration should also be given as to how new applications are advised on, lest their genesis later be examined.

The above considerations may not be new to a busy contentious practice, but difficulty can arise when junior staff are passed a matter where the other side is playing for keeps. Even experienced practitioners can be taken by surprise if they have, as is often the case, spent a considerable spell in settling matters for genteel blue-chip clients. In short, while you might be a “black belt” in terms of experience, it pays to approach every dispute with the necessary degree of caution and respect.

¹ [1999] EWCA Civ 3027

² [2020] C-371/18

³ [2021] T‑663/19

Dewdney Drew is a Chartered Trade Mark Attorney and Director, Trade Marks at Murgitroyd

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