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This article was published in the September 2024 issue of PTMG’s Law, Lore & Practice
Whilst many in July were enjoying a well-earned summer break, the officials at the UK Intellectual Property Office (UK IPO) were busy publishing the first Tribunal Practice Notice (TPN) of 2024.
TPNs are issued when the UK IPO sees a need to change or clarify registry practice. This latest TPN concerns restrictions made to the specifications of applications and registrations, particularly in the course of contentious registry proceedings. These types of proceedings are often settled after one party agrees to restrict its specification to exclude the commercial interests of the other party.
The UK IPO has apparently seen an increase in restrictions it deems unsuitable, and so the TPN identifies some common issues and how these can be resolved.
Key issues
Restrictions are most commonly rejected for the following reasons:
Not sufficiently clear and precise
Restrictions must be sufficiently clear and precise, such that the UK IPO and third parties can identify what is and is not covered by the specification.
Whilst restrictions can be expressed in positive terms (e.g. ‘…all the aforesaid being antibiotics’) or negative terms (e.g. ‘…none of the aforesaid being antivirals’), issues often arise when a restriction incorporates both positive and negative wording (e.g. ‘research and development; none of the aforesaid relating to pharmaceuticals, including but not limited to antibiotics, but not including antivirals’). The UK IPO advises that such multilayered restrictions be avoided, if at all possible. A simpler formulation such as ‘research and development; all the aforesaid relating to antivirals’ would be preferable, if appropriate.
Identifies a characteristic rather than subcategory of goods or services
It is not permissible to exclude characteristics of goods and services. These are features that do not affect the nature, function or purpose of the goods/services. For instance, the following restriction would likely be rejected: ‘Plasters, all displaying images of cartoon characters’.
The way in which the applicant intends to market their goods/services is not a sub-category and will not be accepted – e.g. the following restriction would likely be rejected: ‘Toothpaste, none of the aforesaid sold via the internet.’
For goods, restrictions describing the intended recipient are unlikely to be acceptable. For example, the restricted specification: ‘Orthopaedic shoes, all of the aforesaid being for use by the elderly’ is unlikely to be acceptable because the goods themselves will likely remain unchanged, irrespective of the intended recipient. The exception to this is where the function of the product is defined by reference to its user – for example: ‘Medical inhalers for use by asthmatics’.
Does not make sense within the context of the specification
Restrictions which contradict existing terms in the specification will not be acceptable. For instance, the following is likely to be rejected: ‘Acetaminophen; none of the aforesaid being analgesics or antipyretics’.
Restrictions that are nonsensical will not be accepted. For example: ‘Manufacturing services; none of the aforesaid relating to medical services’.
Restrictions that exclude goods or services that would in any case not be covered by the class will not be acceptable. For example: ‘Pharmaceuticals; not including medical inhalers’.
Other procedural considerations
The UK IPO accepts that it may take several attempts for applicants/holders to come up with suitable restriction wording. The UK IPO will likely accept a short sequence of brief written exchanges, but where discussions are becoming protracted, the UK IPO may set a hearing to try to bring about a swifter resolution. Note that this hearing will take place between the Registrar and the trade mark applicant/holder. The other party will not typically be invited.
The deadline to file a defence and counterstatement in contentious proceedings is non-extendable. If a party is waiting for the UK IPO to action a restriction request when this deadline falls, that party will need to file a defence and counterstatement to protect its position.
The UK IPO may agree to suspend the proceedings if the parties need time to discuss an alternative restriction. The parties should ideally give proof that they are seeking to address the UK IPO’s reasons for refusing the original request.
Specification restrictions should not be used to record geographic limitations or disclaimers to marks. These should be made in a separate written request.
Conclusion
When negotiating a settlement involving UK trade marks, parties would be well-advised to take account of the guidance set out in the TPN from the outset of their discussions. There is otherwise a risk of having to return to the drawing board at a late stage in the negotiation, in order to identify a restriction that is acceptable to the UK IPO.
Category: Latest Insights | Author: Suzanne Power | Published: | Read more
