Patent Office - European National Trade Mark Offices

xxviii Patents and Designs Journal No. 5940 26 March 2003
Notices - cont
The nature of the appeal: CPR rule 52.11.
11. In general, in accordance with rule 52.11 (which already governed trade mark appeals
to the court in the absence of specific provision in Practice Direction 49E), the appeal will
be limited to a review of the comptroller’s decision. The practice of the courts under rule
52.11 is explained in the commentary in “Civil Procedure”. Section 16.15 of Practice
Direction 49E, whereby patents appeals were by way of a rehearing rather than a review
(although further evidence was prohibited on appeal except with the leave of the court)
will no longer apply.
Transitional provisions
12. The new rules do not make specific provision for appeals against decisions issued
before 1 April 2003 whose original appeal period (ie as prescribed by Practice Direction
49E) would have continued beyond the 14-day default period that will be effective by virtue
of rule 52.4 as from 1 April 2003. In effect, these appeal periods may be abruptly truncated
on that date (or shortly after for decisions issued in the last two weeks of March). The
comptroller has no power to alter the periods prescribed in Practice Direction 49E of her
own volition, but equally, as explained above, she will have no power to extend the rule
52.4 period. However, the Patents Court has made clear that, unless there are special
circumstances, it will look sympathetically on any request to extend to its original length
any appeal period which gets truncated in this way. An announcement to that effect is to
be made in the Patents Court Guide, available on the Court Service website
www.courtservice.gov.uk.
Appeals to the Appointed Person and the Registered Designs Appeal Tribunal
Appointed Person
13. The period for appeal to the Appointed Person is 28 days under the Trade Marks Rules
and the comptroller has sole jurisdiction to extend this period. In relation to the nature of
the appeal, the Appointed Person is not bound by the Civil Procedure Rules but is generally
guided by the court’s approach to the distinction between review and rehearing.
Registered Designs Appeal Tribunal
14. The Registered Designs Appeal Tribunal Rules 1950 (as amended 1970) govern
appeals to the Tribunal under section 28 of the Registered Designs Act 1949 (as amended
by the Copyright, Designs and Patents Act 1988) and section 249 of the 1988 Act. Under
these Rules the period for appeal is 14 days for a decision on a matter of procedure and
six weeks for other decisions, and the comptroller may extend the period upon request
made prior to its expiry.
Enquiries
15. Enquiries concerning this Notice should be directed to: