Intellectual Property Office

3. Mr M complains that the decision taken by the IPO Tribunal in August 2019 to dismiss his appeal concerning his revoked trademarks was incorrect.

4. Mr M says the Tribunal decision was wrong and flawed as the Tribunal failed to consider any of the evidence he had submitted with his appeal. Mr M says the IPO ignored vital information he had provided, and the Tribunal officer did not take into account the facts of the case when reaching his decision.

5. Mr M says as a result of the incorrect decision, his trademarks remain revoked, and this has meant they are being used illegally for financial gain by others. Mr M says his trademarks are being misused and he is unable to take legal action for this until the revocation is lifted by the IPO.

6. Mr M would like the IPO to reconsider his appeal so that it can lift the revocation of his trademarks.

7. In July 2019, Mr M appealed a decision by the IPO to invalidate the trademarks that had been previously registered in his name. These trademarks were now being claimed by another individual and Mr M was attempting to reinstate these back to his name.

8. When Mr M appealed to the Tribunal, he was given directions to comply with by the Tribunal. The IPO say Mr M did not comply with these directions and the appeal was subsequently dismissed in August 2019. This meant that that the trademarks remain revoked and Mr M cannot take further action against the individual alleged to have been using them disingenuously.

9. Mr M complains that the Tribunal did not reach the correct decision and dismissed his appeal without explanation as well as the fact that it did not consider all the evidence he had submitted. He feels he was not given a fair opportunity to attend a hearing to put forward his case. Mr M says he simply wants the Tribunal to consider his case fairly and allow the evidence to be properly reviewed.

10. The IPO has advised Mr M that it cannot re-investigate or reconsider the evidence as it does not have the legislative powers to overturn or reconsider a finding by the Tribunal.

The IPO’s decision

12. The law says we cannot investigate a complaint where a person has (or had) the option to take legal action, unless we consider this is (or was) unreasonable in the circumstances. We have considered this to understand Mr M’s circumstances and the outcomes Mr M wants. We do not consider whether legal action would succeed but whether it would be a reasonable option to look in to.

13. We have considered the evidence and our view is that Mr M has a legal route to achieve the outcome he desires. This route was the initial appeal he had lodged at the Tribunal in July 2019, however, as the decision cannot be reconsidered by the IPO, Mr M now has a final route to seek a Judicial Review of the decision taken by the Tribunal.

14. As stated above, Mr M filed an appeal on 5 July 2019, following a decision by the Tribunal officer on 1 July 2019, that Mr M’s registrations be declared invalid and deemed never to have been made.

15. Any decision made by the Tribunal can be appealed to either the ‘appointed person’ or the High Court. An ‘appointed person’ is a senior intellectual property lawyer appointed by the Ministry of Justice; he or she is totally independent of the Tribunal. The appointed person will normally make a decision following an oral hearing, but a decision may sometimes be taken off the papers.

16. The appeal is a review of the hearing officer’s decision and is not a full rehearing of the case. An appeal will only be upheld if the appointed officer is satisfied that there has been a distinct and material error of principle in the hearing officer’s decision, or that the hearing officer was clearly wrong.

17. The decision of the appointed person is final and it cannot be appealed to any higher body.

18. When Mr M filed his appeal application, he completed ‘Form TM55P’, the effect of which was that he elected to appeal to the Appointed Person rather than the Court (the High Court).

19. Section 76 (4) of the Trade Marks Act 1994 states that ‘Where an appeal is made to an appointed person and he does not refer it to the court, he shall hear and determine the appeal and his decision shall be final’.

20. This means that because of the way Mr M applied to the Tribunal, his appeal could only have been determined by the Appointed Person, and it could only be referred to the court if the Appointed Person themselves referred it.

21. Mr M says he was not given an opportunity to have his oral evidence heard at court, but the evidence we have seen shows this was because he filed a form which requested the Appointed Person to determine the outcome, rather than to ask a court to consider the case.

22. Mr M complains that the decision to dismiss his appeal was incorrect and he has asked the IPO to look at this process. However, the IPO does not have the power to reinvestigate this appeal or its process, as the Appointed Officer has already made a decision, and the legislation says the Appointed Officer’s decision is final.

23. It is our view that the only route for Mr M to have his case reconsidered, or to challenge the decision made by the Appointed Officer, is to seek a Judicial Review of the Appointed Officer’s decision. The only available and correct route for Mr M to appeal the decision to invalidate his trademarks was to ask the Tribunal to reconsider the decision, but this could have also been something the court could have looked at had Mr M made that application. This would have meant Mr M would have been able to attend court and give his evidence in person as he wished.

24. The IPO cannot now reconsider these issues, and it is also not within the Ombudsman’s role to investigate a complaint which has an alternative legal route that is reasonable for the complainant to pursue and will achieve the outcome desired by the complainant. The Ombudsman also cannot challenge a decision which has made made in a court or tribunal.

25. We have not seen any barriers to Mr M pursuing his desired outcome in this way and, as taking further legal action is the only way to achieve the outcome he seeks, we have decided not to investigate this complaint.

26. For these reasons, our decision is that the most appropriate way for Mr M to resolve his concerns is to consider exploring the avenue of a Judicial Review to seek a reconsideration of the Tribunal decision.

1. We have carefully considered Mr M’s complaint about the Intellectual Property Office (IPO). We consider Mr M could take legal action on the matter, and therefore the complaint is not appropriate for us to investigate.

2. Mr M complains about a decision taken by a Tribunal following a request for an Appeal. However, the Tribunal cannot re-examine that decision and the IPO is not an appropriate channel for re-visiting these decisions. Our view is that Mr M has or had an alternative legal route he could, or should, have pursued to achieve the outcomes he desires. We understand this will be disappointing for Mr M and we can empathise with the stressful and difficult period he has experienced in trying to resolve this issue.