Can your Trade Mark Attorney be replaced with AI?

A recent decision issued by the Appointed Person in relation to consolidated opposition and cancellation proceedings demonstrates the serious risks involved in using AI in UK IPO proceedings.

Background

The matter concerned a routine appeal in relation to a trade mark opposition and invalidity decision issued by the UK IPO after Prohealth Inc successfully managed to oppose an application and invalidate a registration owned by Pro Health Solutions based on earlier goodwill. The interesting part of this Appointed Person appeal decision does not lie in the specific facts of the case, but rather in the way in which the parties prepared their skeleton arguments prior to the hearing.

Pro Health Solutions was represented in the matter by Dr Soufian, acting as a litigant in person, whereas Prohealth Inc engaged professional representation. Both parties filed skeleton arguments which included fabricated citations.

The parties’ conduct

At the outset of the decision, the Appointed Person addresses the skeleton arguments of both parties as a preliminary issue. The Grounds of Appeal filed by Pro Health Solutions included a list of case law, each with a case name, a citation, a court, a “quote”, a URL and a comment. Whilst the cases were real, the concern was that the “quotes” from the cases could not be located by the Appointed Person anywhere in the cited decisions. The skeleton argument contained references to six further cases, two of which had incorrect references and three of which were accompanied by a summary of what the case decided which substantially misrepresented the outcome of the case. When queried by the Appointed Person, Dr Soufian confirmed that he had prepared the skeleton argument using Chat GPT.

In the case of Prohealth Inc, the trade mark attorney who prepared the skeleton argument has not confirmed their use of AI to prepare the arguments. However, they did present three (genuine) cases which did not appear to the Hearing Officer to be relevant to the points of law being made. When questioned during the hearing, the attorney was unable to show where in the decisions relevant paragraphs appeared. He suggested his references may have come from an old edition of Kerly’s Law on Trade Marks or from Wadlow on the Law of Passing Off, but he was unable to reference specific paragraphs of those publications. After the hearing, the attorney contacted the Appointed Person to indicate that he had not expected to need to demonstrate further support for his position. In that email he tried, and failed, to convince the Appointed Person that the cases cited did in fact include support for the arguments he was attempting to put forward.

The Appointed Person’s comments

The nine page decision issued by the Appointed Person dedicates nearly six pages to dealing with the acts of the parties in preparing the skeleton arguments, the use of AI, the reference of parties to irrelevant case law and the appropriate sanctions to put in place.

The Appointed Person references cases from other areas of law which discuss the risks associated with using AI during legal research and the preparation of legal arguments, namely that large language models such as Chat GPT are not currently capable of conducting reliable legal research and have been known to produce incorrect responses to prompts which, on their face, appear to be plausible and coherent and which are sometimes backed up by citations which do not exist.

The Appointed Person highlighted that professional representatives should take particular care to ensure they comply with their ethical duties to both their clients and to the courts/tribunals by making sure that sources cited by AI tools are checked for accuracy and relevance to the matter, in exactly the same way legal professionals would expect to check sources cited by trainees.

Litigants in person also have a duty not to mislead the court/tribunal even though they are usually given more leniency than professional representatives. Litigants in person are less likely to be punished for citing irrelevant cases/arguments where the citation is based on a genuine misunderstanding of the matter, but this leniency will not extend to mistakes and misunderstandings which are based on entirely false laws or cases.

Sanctions

Various sanctions are discussed in the decision which are available to the courts, although the Appointed Person has more limited powers to impose sanctions. Options open to the courts include:

• potential referrals to the police (e.g. for fraud or perverting the course of justice)
• contempt of court
• wasted costs orders
• off the scale costs
• referrals to professional regulatory bodies such as IPREG.

Ultimately, the Appointed Person concluded that in the case of Dr Soufian, the appropriate way to deal with his conduct, bearing in mind his lack of experience and his immediate and reserved apology during the hearing, would have been to award off the scale costs in the event he was the successful party.

In the case of the professional representative for Prohealth Inc, the Appointed Person concluded that he simply could not say how the fabricated citations had been developed, and he issued a reminder that fabricated citations not only include false cases, but also include citing a case in support of a legal argument where there is simply no basis to support such an argument. Several concerning points of conduct were highlighted by the Appointed Person, firstly that he did not know where his propositions of law had originated from, secondly that he did not think he would be expected to expand on the points in his skeleton argument, and thirdly that he claimed to have been using out of date textbooks. The Appointed Person considered referring the individual in question to IPREG but decided not to on this occasion.

A strong warning and a change of practice

The Appointed Person made it clear that, in their view, a warning needs to be given to all litigants to make them aware of the risks of using AI to research or prepare their legal arguments. As a result of this call to action, the UK IPO has already implemented a change in practice and its letter inviting the parties to be heard includes a strong warning about unreasonable behaviour, including reference to the possible sanctions for such behaviour.

In future, given the warning that is now included by the UK IPO in its notices, those who present fabricated citations should expect the registrar and the Appointed Person to look less favourably than was the case in this instance.

Key takeaways

In short, beware when using AI in the preparation of legal arguments. Whilst AI can sometimes be a helpful assistive tool for research or preparation of skeleton arguments, you must ensure that all citations are checked carefully, and that all case law suggested by AI is read closely to ensure you understand its meaning and relevance to your case. Whether you are a professional representative or a litigant in person, be mindful of your duties to the court or the tribunal – getting it wrong could be very embarrassing and in the case of professional representatives might lead to being reported to your regulating body.