CDR Magazine quotes Charlotte Duly on the inter partes process for trade mark opposition

CDR Magazine speaks to IP professionals about the inter partes process for trade mark opposition, where the UK IPO held that Alcohol Change UK could not prevent others from using the term ‘Dry January’.

Alcohol Change UK, a charity focused on decreasing harm attributable to alcohol consumption, suffered a setback this year in its mission to assert its rights to a phrase which has become increasingly commonplace over the past decade.

The UK Intellectual Property Office (IPO) rendered its decision on 20 February with publication following, where the charity’s attempt to register ‘Dry January’ as a trade mark under certain classes was denied as part of the IPO’s inter partes process. What is this mysterious process, how does it work, and what characteristics does it have?

Robert Li, Senior Reporter at CDR Magazine, asks Charlotte: So why would parties choose the appointed person process if to do so would obviate their right of further appeal?

Charlotte Duly, Head of Brand Protection, says:

Most parties choose the appointed person route as it is a less formal process which follows registry proceedings, and there are fewer costs and requirements.

Charlotte goes on to explain that the prospects of a successful appeal to an appointed person are low in her experience, in part because of the high quality of the prior decisions.

“[The hearing officer will have] gone through the evidence thoroughly, and tends to draft with an appeal in mind. An appeal is not a rehearing, but needs to look at whether the hearing officer made an error either in fact or in law. An appointed person might feel they would make a different decision, but can only overturn it if it was wrong. So very few appeals are successful.

Read the full piece in CDR Magazine here.