Expert Witness Journal Issue 64 December 2025 - Flipbook - Page 83
punishment. Fabricating citations, in contrast, may
occasion sanctions, and ‘it does not matter whether
fabrication was arrived at with or without the aid of
generative arti昀椀cial intelligence.’
The lessons of Ayinde apply in the trade
marks registry
The risks of relying on genAI for legal research were
demonstrated in a trade mark opposition appeal
to the Appointed Person against a decision of the
Registrar in the Intellectual Property O昀케ce (IPO).
The grounds of appeal and skeleton argument of
the appellant – for whom Dr Sou昀椀an appeared as
a litigant in person – and the skeleton argument of
the respondent, represented by Mr Caddy, a trade
mark attorney, raised questions on the use of AI.
Sanctions available for misconduct
The Appointed Person concluded that misconduct
before the Appointed Person or the registrar of trade
marks is unlikely to fall within the law of contempt.
The Appointed Person then considered sanction by
way of a costs order. Neither the Appointed Person
nor the registrar has the power to make a wasted costs
order, nor to order costs against a representative of
a party. Both the registrar (per rule 67 of the Trade
Marks Rules 2008) and the Appointed Person (per
rule 73(4)) may, however, ‘award any party such costs
… and direct how and by what parties they are to be paid’.
The Appointed Person noted that the grounds of
appeal referred to a number of authorities and
included ‘quotes’ from each one; the cases were
genuine but the quotes cited in the grounds of
appeal did not exist in those decisions. Dr Sou昀椀an’s
skeleton argument similarly listed cases relied
upon, two of which had ‘complex (but incorrect)
references’. Those were accompanied with short
summaries of the propositions for which each case
stood; for three of these, the summary was held to
have been a substantial misrepresentation of the
case.
Whilst the usual rule on costs before the registrar
is that they are awarded on the relevant scale at the
time, ‘o昀昀 scale’ costs can be awarded where a party
acts unreasonably. The Appointed Person observed
that ‘[i]t is di昀케cult to see a situation where the conduct of
a party who has tried to rely on fabricated citations could
be seen as anything but unreasonable.’ Accordingly,
o昀昀 scale costs should be the ‘starting point’ in such
instances. In the appeal at hand, the Appointed
Person awarded no costs to the respondent, despite
the appeal being dismissed, by reason of Mr Caddy’s
conduct.
Upon questioning, Dr Sou昀椀an con昀椀rmed that
ChatGPT had been used to assist with the grounds
of appeal and the skeleton argument, and an
unreserved apology was given for the noted
inaccuracies. The Appointed Person observed that
the arguments ChatGPT generated were ‘largely
not relevant to the issues’ and were consequently
unhelpful to the appellant’s position.
Referral of a professional representative to a
regulator, or admonition either publicly or in a
decision were also considered. Referring to Ayinde,
the Appointed Person noted that similar duties exist
for trade mark attorneys as those which apply to
lawyers. Considering the central principles of the
Core Regulatory Framework adopted by IPReg in
July 2023, he noted that ‘one or more of these duties
will clearly be breached by a trade mark attorney who
puts fabricated case citations before the registrar or the
Appointed Person’.
Turning to the respondent’s skeleton argument,
three cases relied upon were genuine and were
correctly cited. However, it was unclear that those
cases stood for the propositions for which they were
cited. The Appointed Person probed this during
the hearing, and Mr Caddy was not able to point to
the parts of the cited judgments despite being given
additional time to do so.
In considering how to address the conduct on
both sides which fell clearly below expectations
for litigants, the Appointed Person reviewed the
昀椀ndings in Ayinde, and the decision in Olsen v
Finansiel Stabilitet A/S [2025] EWHC 42 (KB) which
considered the duties owed to the court by litigants
in person, concluding:
“
The Appointed Person noted that the registrar has
the inherent jurisdiction to strike out or stay all or
part of a case, concluding however that ‘the nature
of proceedings before the registry and before the
Appointed Person means that it is usually not coste昀昀ective for a party to apply for a strike out in advance
of the 昀椀nal hearing. Where a Hearing O昀케cer or the
Appointed Person is aware material is fabricated, it
will be disregarded in any event whether or not it is
formally struck out.
[I]t is clear that litigants-in-person (however
inexperienced) have a duty not to mislead the registrar
or the Appointed Person by providing fabricated
authorities.’
The Appointed Person considered that the registrar
ought to adopt a practice of including a clear notice
on the risks of reliance on genAI, and that ‘a very
clear warning needs to be given to make even the
most nervous litigant aware of the risks they are
taking’.
Litigants-in-person are given much greater latitude
in the conduct of their case than those with
professional legal representation. Honest mistakes
and misunderstandings as to the authority for
which a case may stand, ought not to give rise to
EXPERT WITNESS JOURNAL
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DECEMBER/JANUARY 2025-2026
