A recent decision by the High Court of England and Wales considered whether fresh evidence was admissible for use on appeal following a successful non-use revocation at the UKIPO. Vanessa Harrow examines the decision and the principles for submitting late evidence.

If you are required to submit evidence in proceedings, it is important to ensure your best case is put forward in the first instance. If the evidence is deemed insufficient, you are unlikely to have a second chance at addressing the weaknesses, as a recent decision by the High Court of England and Wales makes clear.

Background to the dispute

In September 2016, Consolidated Developments Limited (CDL) applied to the UKIPO to revoke four trademark registrations on the basis of non-use. The registrations, owned by a Mr AA Cooper, were for the marks TIN PAN ALLEY and TPA in a number of classes. Cooper was required to submit evidence showing genuine use of the marks within the UK for the goods/services registered and/or provide proper reasons for non-use.

While some evidence of use was submitted, the UKIPO Hearing Office took the view that, for the most part, that evidence was insufficient to demonstrate genuine use. It revoked the registrations in their entirety, bar one registration which was partially revoked for all but a limited set of services. Both parties appealed the decision and the matter was referred to the High Court.

The grounds for appeal

In its appeal, CDL sought to overturn the decision in relation to the partially revoked registration by calling into question the evidence which had been found sufficient; in particular, it questioned the genuineness of some of the evidence submitted. On this matter, however, the High Court upheld the decision of the Hearing Officer finding that, in the interest of procedural fairness, such allegations should have been raised and dealt with by cross-examination during the hearing.

In his own appeal against the full revocations, Cooper sought to introduce evidence that had not previously been submitted, arguing that had this evidence been put before the Hearing Officer, they would have found the marks had been used for a much wider range of goods and services. The additional evidence was served several months after the original decision and the High Court was asked to decide whether the additional evidence was admissible and whether the case should be referred back to the UKIPO to be re-heard.

Here, the High Court confirmed that additional evidence can, at the discretion of the court, be allowed on appeal, but that this should be the exception and not the rule.

When should that discretion be exercised?

In deciding whether to exercise that discretion, the High Court considered the following:

  • Could the new evidence and have been filed earlier and, if so, how much earlier?
  • What explanation is there for the late filing?
  • Does the nature of the marks and/or the objections affect the exercise of discretion?
  • What is the potential significance of the additional evidence?
  • Will the non-requesting party be significantly prejudiced by the admission of the evidence in a way which could not be compensated?
  • Is there a desire to avoid multiplicity of proceedings?

In this specific case, the High Court highlighted that the new evidence was available at the time of the earlier hearing and did not contain anything that was not known at the time. While Cooper sought to justify the delay by reference to personal difficulties and poor mental health, it found that there was not sufficient medical evidence to support this claim. Therefore, the purported justifications for the delay were not sufficient to outweigh the prejudice that would be caused to CDL.

On the final factor, concerning multiplicity of proceedings, the High Court noted the importance of this consideration due to the need for finality in litigation. Here, the admission of the new evidence would have required the case to be sent back to the UKIPO for a fresh hearing. It found CDL should not have to face the case for a second time when the evidence could and should have been submitted on the first occasion. The appeal was dismissed and the additional evidence was not allowed to be admitted.

Don’t wait until it’s too late!

The ruling illustrates the importance of submitting evidence of use promptly. An appeal is not a second chance to run the same arguments again in the hopes for a better result.

While there is discretion for additional evidence to be admitted on appeal, the principles of justice and the overriding objective of the procedural rules means that this will be the exception rather than the rule.

Keeping a store of evidence throughout the life of your brand will help ensure you have the relevant material ready if and when the need arises.