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Friday, 21 October 2016

Meet the Trade Mark Judges (Part One)

Monday evening marked the annual IBIL and MARQUES Meet the Trade Mark Judges event at UCL.

This year the chair, The Rt Hon Professor Sir Robin Jacob, posed a set of pre-selected questions from the audience to:
  1. Paolo Catallozzi (Judge of the Enterprise Court of Rome) 
  2. The Hon Mr Justice Henry Carr (Judge of the English High Court) 
  3. Judge Christopher Vajda (Court of Justice of the European Union) 
  4. Oliver Morris (UK Intellectual Property Office Senior Hearing Officer) 
The evening covered enough ground to fill (at least) two posts.  This is Part One...

How much does advocacy play a part in judges reaching their decision? 

Not a new question but an understandably popular one for a room full of lawyers.  The broad consensus was that it can be very helpful to the judge to have good advocates but it's rare that it swings a decision one way or another.

Selected soundbites include:
  • If a party is in the right they have many chances to win even if their lawyer is not as good. 
  • Judges are not distracted by legal style... but when a famous lawyer is speaking a judge may unconsciously pay more attention.  
  • If there is no established jurisprudence it can be particularly helpful to be guided through the relevant steps the court is required to follow (and may avoid judges getting bored!)    
  • Whilst the English bar has a very good reputation in the Court of Justice of the European Union (CJEU), it does not follow that they always win the case!  
  • In the Intellectual Property Office (IPO), an advocate's style can make a particular difference where a case is finely balanced. 
  • A good advocate is unlikely to win a bad case but a bad advocate may lose a good one.
The view from the High Court of England and Wales was particularly pro-advocacy.  Carr J noted that the importance of advocacy was most noticeable where you have litigants in person without any professional legal input.  He gave the CLIPS scheme a glowing endorsement.  This scheme uses volunteer advocates to assign free representation to litigants in person in the Chancery Division.  Carr noted that whilst it may not make a big difference to the eventual outcome it made it much easier for the judge to identify and consider the relevant issues and use the limited court time effectively.  Carr estimated that in around 20% of marginal cases he might change his mind on a particular issue following persuasive advocacy but this might not necessarily affect the outcome.

Does the involvement of a well-known lawyer indicate a winning or a losing case?  There were two schools of thought: (1) a famous lawyer could not possibly have accepted a losing case for fear of the damage to their reputation; or (2) only more established lawyers take on the 'challenging' cases.

Big difference in the CJEU is the long gap between the hearing and reaching decision if the case requires an opinion from the Advocate General (AG).  In Vadja's experience, most cases he handles (and certainly all difficult cases) have an AG opinion.  The Court will wait for the AG's opinion before discussing the case between them.  In practice, this means the court has to return to their notes from the hearing several months after the event when the finer points under discussion may be a more distant memory.  This meant that the starting point is generally the AG's opinion (as intended).

How long should advocacy last? 

The CJEU now has a fixed time limit of 15 minutes for everyone.  Judge Vadja's view was that this approach works well. Written pleadings normally quite full and the oral hearing is simply a supplement to those pleadings.  Because of the nature of the court, the majority of the advocates have not appeared before the court before.  His big warning to advocates was not to simply repeat the written testimony but be sure to add something new and focus on the key points.  The judges often try to ask questions to focus the advocates to the case.  This means the hearings consist of short oral submissions followed by questions.  Although questioning of counsel is not necessary, it nearly always happens in practice.

Do we take too long in England? Henry Carr gave a simple answer: "Yes".  But went on to note that appeals do not tend to take too long and 15 minutes is not long enough to explore questions of fact.

The Italian courts have full discretion to decide the order in which issues are presented and how many minutes are permitted per issue.  However, unlike English judges, the Italian ones will not normally interrupt.  Hearings generally take 10s of minutes rather than hours.  The problem for Italian judges is not the oral hearing it is the written statements which can involve a lot of trees (as well as some irrelevant issues).

Should judges have prior experience of trade mark law before being entrusted with a case?  And is that prior experience necessarily a good thing?

At an EU level, a large proportion of the CJEU and General Court's case load concerns trade marks.  However, most judges have no prior experience of trade marks before they join the court.  Is this a problem?

It was a question of balancing efficiency with diversity.

To improve the efficiency of a court, particularly when it deals with a large volume of trade mark cases, there is something to be said for someone familiar with issues and arguments.  Therefore it can be helpful to have judges who are familiar with the underlying legal issues they have to consider.

Catalozzi indicated that the Italian system could benefit from more judges having prior litigation experience.  The same issue arises at the CJEU where many judges are nominated from routes where they have not had to gain litigation experience. As Robin Jacob put it: "I've seldom met anyone who doesn't think poachers turned gamekeepers isn't a good idea".

Although the General Court is on a hiring spree (the number of judges is doubling so each Member State will contribute two judges), Judge Vadja's view was that setting quotas is not helpful.  However, it is important to have a balanced and diverse court in terms of prior experience (career judge vs former practitioner), specialism and background.  Judge Vadja highlighted that it is a good thing for any judicial system to represent people from different backgrounds and with different perspectives.

Carr noted that many of the best trade mark judgments come from non specialists such as Neuberger LJ.  In his view, it is not necessary to have specialist trade mark judges.  However, patents is a different issue and non specialists tend to struggle with patent cases.

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