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Admissibility of fresh evidence: appealing summary of the principles

Date: 27 September 2018

 

From bling to tin, and a UK decision that deals with fresh evidence in trade mark appeals (Consolidated Developments Ltd v Cooper [2018] EWHC 1727).

 

Consolidated Developments Limited (“CDL”), a landlord with premises in an area of Soho known as Tin Pan Alley, sought to revoke four UK trade mark registrations. Three were for TIN PAN ALLEY. The fourth was for the abbreviated version “TPA”. CDL claimed that the marks had not been put to genuine use during a particular five year period by the proprietor, Mr Cooper, or with his consent. Three of the marks were revoked in full for non-use, but one of the TIN PAN ALLEY registrations was maintained for “providing advertising space on websites, for others”.

 

Cooper appealed to the Appointed Person, seeking to introduce additional evidence of use (without any actual challenge to the reasons for the decision). CDL appealed the partial maintenance of the one remaining registration. The Appointed Person referred the case to the High Court on the question of the introduction of the evidence.

 

The general principle is there is a need to adduce all relevant evidence at the first hearing. There could be exceptions; these were considered in Ladd v Marshall [1954] 1 WLR 1489; relevant criteria included: (i) that the evidence could not have been obtained with reasonable diligence for use at the original trial; (ii) that the evidence would have an important influence on the result of the case; and (iii) that it should be credible.

 

In Hunt-Wesson Inc’s Trade Mark Application [1996] RPC 234, the principles in Ladd v Marshall were approved, but other factors should be considered where dealing with a trade mark opposition rather than with a trial. A UKIPO decision could allow a statutory monopoly, which may have a significant impact on other traders. Factors to be considered include: (i) whether the evidence could have been filed earlier (and how much earlier); (ii) explanation for late filing and delay; (iii) nature of the mark; (iv) nature of the objections; significance of the new evidence; whether the other side would be significantly prejudiced by the admission of the evidence in a way that could not be compensated (such as by costs order); the desirability of multiplicity of proceedings; and the public interest in not admitting onto the register invalid marks.

 

Cooper explained he was suffering from depression at the time when the evidence was originally due: these circumstances, including the liquidation of his business, and the illness of his wife, affected his ability to perform the task. Whilst the court was sympathetic, as there was no medical certificate to substantiate the illness, and the evidence which was sought to be introduced should have been available at the time of the original hearing, it found on balance it was not appropriate to introduce the evidence, which would have had the effect of remitting the case to the Hearing Officer for a re-hearing. Mr Cooper’s appeal was denied. Likewise CDL’s appeal was dismissed, as this also looked to be a request for a re-run of the original arguments.

 

Hence, where the admission of fresh evidence on appeal would require that the case be remitted to a rehearing at first instance, the interest of the parties and the public in fostering finality in litigation are particularly significant and may tip the balance against the admission of such evidence.

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