The High Court has refused to admit additional evidence on an appeal from the Intellectual Property Office (IPO) in a trade mark revocation action and has set out the principles governing the admissibility of fresh evidence in trade mark appeals.
Ladd v Marshall set out the following three-part test for admission of fresh evidence on appeal, that it:
- Could not have been obtained with reasonable diligence for use at the trial.
- Would probably have an important influence on the result of the case, though it need not be decisive.
- Must be credible, though it need not be incontrovertible ( EWCA Civ 1).
Civil Procedure Rule (CPR) 52.21(2) provides that unless it orders otherwise, the appeal court will not receive oral evidence or evidence which was not before the lower court.
In Hunt-Wesson Inc’s Trade Mark Application, the High Court considered Ladd and the following factors to determine whether further evidence should be admitted:
- Whether the evidence could have been filed earlier and, if so, how much earlier.
- What explanation had been offered to explain the delay.
- The nature of the mark.
- The nature of the objections to it.
- The potential significance of the new evidence.
- Whether the other side would be significantly prejudiced by the admission of the evidence in a way which could not be compensated, for example, by an order for costs.
- The desirability of avoiding multiplicity of proceedings.
- The public interest in not admitting onto the register invalid marks ( RPC 233).
C owned four registered trade marks, including the words "Tin Pan Alley".
CD applied to revoke the marks because they had not been put to genuine use during a five-year period between 2011 and 2016.
The IPO entirely revoked three marks, but only partially revoked the fourth mark for non-use and maintained it in respect of services in class 35 relating to the provision of advertising space on websites.
C appealed, arguing that the IPO was entitled to reach its conclusions on the evidence, but sought to introduce additional evidence to demonstrate recent use of the marks. C argued that, had the IPO had the opportunity to review the additional evidence, it would have found that the marks had been used for a wider range of goods and services. C submitted that he had been unable to produce the fresh evidence earlier because he had been suffering from severe depression and so unable to consider what evidence he might have sourced from third parties in response to the revocation applications.
CD opposed the admission of the fresh evidence, arguing that it was largely anecdotal, lacked any detail as to dates and quantities of use, and took the case no further than the original evidence. CD cross-appealed, arguing that the IPO had failed properly to analyse the evidence relating to the fourth mark in respect of a limited part of its specification.
The court dismissed the appeal, refusing to allow the introduction of fresh evidence. It also dismissed the cross-appeal.
The same principles applied in trade mark appeals as other appeals under CPR 52, but additional factors might be relevant.
The Ladd factors were basic to the exercise of the court's discretion, and these were to be applied in the light of the overriding objective. It was also useful to have regard to the Hunt-Wesson factors. The relevant factors would vary, depending on the circumstances of each case: neither the Ladd factors nor the Hunt-Wesson factors were to be regarded as exhaustive.
The admission of fresh evidence on appeal was the exception and not the rule. The court or the Appointed Person did not have a broad remedial discretion to admit fresh evidence on appeal to enable proceedings in the trade mark registry to be re-opened.
Where the admission of fresh evidence on appeal would require that the case be remitted for a rehearing at first instance, the interests of the parties and of the public in the finality of litigation were particularly significant and might tip the balance against the admission of such evidence.
Here, the fresh evidence could have been filed eight months before the IPO's decision. There was no medical evidence to establish C's mental state and the required causality, despite CD's request for this evidence. There was force in CD's criticisms of the fresh evidence, and even if it was relevant and credible the court was not satisfied that, had it been before the IPO, it would have had an important influence on the result of the case.
Also, CD would be significantly prejudiced if the additional evidence were to be admitted. The desirability of avoiding multiplicity of proceedings was also an important factor. If the additional evidence were admitted into the proceedings, the case would have to be heard for a second time. There had to be finality in litigation. CD should not be required to fight, for a second time, a battle which it had already won in the IPO. If the IPO was required to decide cases for a second time based on evidence that could and should have been adduced on the first occasion, other hearings would be delayed.
As to CD's cross-appeal, appeals from the IPO were not to be regarded as opportunities to run the same arguments for a second time hoping to obtain a better result. Generally, a distinct and material error of law or principle had to be identified. No such error was identified here.
The decision provides a useful summary of the principles for considering the admissibility of fresh evidence in trade mark appeals.
Case: Consolidated Developments Ltd v Cooper  EWHC 1727 (Ch).
First published in the September 2018 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.