Skip to content
A substantial portion of the Trade Marks Act 1994 comes from EU legislation (Directive 2015/2436). Section 6 of the Withdrawal Act retains case law from the Court of Justice of the European Union (CJEU), including the General Court, that was issued prior to the end of the transition period and is binding when interpreting such retained law.
The UK trade mark system is largely administered via the Trade Marks Manual which seeks to administer the rules and case law in one document,. It is important to keep in mind that the guidelines provided in the manual should not be followed blindly or without consideration for the specific situation at hand. Every case needs to be evaluated on its own merits. Although an examiner shouldn’t ignore procedure, there may be instances where deviating from standard procedure is warranted given the unique circumstances of a case.
Court of Justice of the European Union (CJEU).
A substantial portion of the Trade Marks Act 1994 comes from EU legislation (Directive 2015/2436). Section 6 of the Withdrawal Act retains case law from the Court of Justice of the European Union (CJEU), including the General Court, that was issued prior to the end of the transition period and is binding when interpreting such retained law. Moreover, decisions rendered by the EU Court may still be taken into consideration once the transition period concludes, even though they are not legally enforceable. However, the Supreme Court, the High Court of Justiciary in Scotland, and certain appeal courts, notably the Court of Appeal, have the authority to deviate from preserved EU case law, and their rulings are final.
UK Courts
These decisions are binding on the Office.
Appointed Person
Except in the specific instance under consideration, the Office is not bound by these rulings on legal matters. Nonetheless, they have persuasive value when examining examples that are similar.
The Office website lists these rulings under the heading “Hearings (Results of past decisions)”. The Lord Chancellor appoints qualified professionals with experience practising intellectual property law as Appointed Persons. They serve as an appeals tribunal for judgements made by the Office. Their rulings are final and cannot be challenged.
The Registrar is not bound by the decisions of other national courts or tribunals, nor are they typically particularly influential, with the exception of judgements rendered by the EU Court (see above). Though they are not legally obligatory, national tribunal and court rulings within the EU may have some persuasive value when interpreting domestic legislation originating from EU directives.
Even when the UK was a Member State of the EU, Laddie J. held in Wagamama [1996] FSR 716 that:
It would not be right for an English Court, if it is firmly of a different view, to follow the route adopted by the courts of another Member State simply because the other courts expressed a view first. The scope of European legislation is too important to be decided on a ‘first past the post’ basis.
