Statutory guidance

Tribunal Practice Notice 1/2024: Restricting specifications of applications and registrations subject to Tribunal proceedings

Published 17 July 2024

Background

1. The Registrar is seeing an increase in the number of unacceptable TM21Bs filed during trade mark opposition proceedings. This is resulting in increased time and costs for both the parties and the Tribunal, as multiple TM21Bs are having to be filed prior to an acceptable restriction being agreed. This notice seeks to address that issue by setting out the Tribunal’s key considerations when assessing whether to accept proposed specification restrictions.

Preliminary points

2. The Registrar is under an obligation to ensure that restrictions to specifications are sufficiently clear and precise, and meet the requirements set out in the case law, before they are recorded on the register.

3. Please note that the same principles apply whether the restriction is expressed negatively or positively, unless specified below (see MERLIN Trade Mark, BL O/043/05 at paragraph 29). The Registrar does not have a preference for either positive or negative restrictions, and it is for the applicant to consider whether a positive or negative restriction is more appropriate in the circumstances (see example at paragraph 9 below).

4. It is for the applicant, potentially with input from the opposing party if it forms the basis of a settlement negotiation, to identify the appropriate wording. The Registrar will not routinely provide or suggest alternative wording for restrictions.

5. In this regard, it is important to bear in mind that not all matters agreed between the parties relating to the applicant’s specification as part of settlement negotiations will be appropriate for inclusion on the register. The parties should consider whether recording such matters as a restriction on the register is appropriate, or whether they can be recorded in another form (such as a co-existence agreement).

6. The Registrar has seen instances where applicants are attempting to use Form TM21Bs to record geographic limitations or disclaimers to their marks. However, this is not the correct format for such amendments. Separate provision is made for the recording of geographic limitations and disclaimers (see section 13 of the Trade Marks Act 1994 and rule 31 of the Trade Marks Rules 2008). Amendments of this nature must be requested in writing.

7. The Tribunal has identified a number of recurring issues with TM21Bs currently being filed. In this regard, when drafting/negotiating a restriction, applicants should bear in mind the following:

Restrictions should be clear and precise

8. Restrictions should be drafted with sufficient clarity and precision to enable the Registrar and third parties to identify what is and is not covered by the specification (see IP Translator, C-307/10 at paragraphs 49, 53 and 64).

9. In this regard, restrictions which have multiple layers can result in a lack of clarity. Parties should consider whether this can be avoided.

Example: The applicant sells game software for mobile phones. The opponent sells a range of financial software, including software for the purpose of tracking financial investments, but also general banking software. The parties are trying to reach an agreement as to how the applicant’s specification can be restricted to enable the opposition to be withdrawn. However, the applicant is concerned that any restriction for financial software at large might prevent it from having an in-app purchase facility, which is essential for its gaming software. With the opponent’s agreement, the applicant proposes the following restriction:

“Software; none of the aforesaid relating to financial services, including but not limited to investment services, investment advice, online trading with financial instruments, financial brokerage services; none of the aforesaid relating to electronic payments or banking, but not including software for in-app purchases as part of gaming software.”

In this case, the use of a primary negative restriction excluding financial services at-large, coupled with further additional restrictions and a conditional exclusion relating to electronic payments and banking, results in an opaque specification that fails to meet the requirements for clarity and precision. A more appropriate restriction would be:

“Software; all of the aforesaid being game software for mobile phones.”

10. The restriction itself should be sufficiently clear and precise (see Gap (ITM) Inc v Gap 360 Ltd [2019] EWHC 1161 (Ch) at paragraph 41, referring to principles set out by Sales J (as he then was) in Total Ltd v YouView TV Ltd [2014] EWHC 1963). For example, the following would not be acceptable because the term ‘ancillary services’ is ambiguous in its scope:

“…; all of the aforesaid being business and ancillary services.”

Restrictions should identify sub-categories of goods/services, not a characteristic

11. A characteristic may be present or absent without changing the nature, function or purpose of the specified goods/services (see Croom’s Application [2005] R.P.C. 2 at paragraph 30). For this reason, the following would not be acceptable:

“Bags, all displaying images of cartoon characters.”

12. The way in which the applicant intends to market their goods/services is not a sub-category and will not be accepted. For this reason, the following would not be acceptable:

“Clothing, all of the aforesaid being merchandise.”

13. For goods, restrictions describing the intended recipient are unlikely to be acceptable. For example, the restricted specification “Tee shirts, all of the aforesaid being for use by mountain climbers” would not be acceptable because the goods themselves will 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, “Diver’s masks”).

14. This can be contrasted with the position in relation to services, which can more readily be defined by their recipient i.e. where a service is targeted at a particular sector (see Omega Engineering Inc v Omega SA [2012] EWHC 3440 (Ch) at paragraph 49 referring to earlier reasoning set out in MERLIN Trade Mark BL O/043/05 [1997] R.P.C. 871 at paragraph 29). However, care will still need to be taken to ensure that it is appropriate for the particular services to be limited by recipient.

Restrictions must make sense within the context of the specification

15. Restrictions which contradict existing terms in the specification will not be acceptable and the obligation is on the applicant to ensure that they have thoroughly reviewed the specification to remove any contradictory terms. For example, the following would not be acceptable:

“Clothing; t-shirts; leggings; sports clothing; jeans; shorts; socks; shirts; skirts; dresses; jumpers; cardigans; hoodies; tights; stockings; footwear; trainers; none of the aforesaid being clothing for sport.”

16. Restrictions that are nonsensical will not be accepted. For example:

“Sunglasses; all of the aforesaid relating to music.”

17. Restrictions which seek to exclude goods/services that would not be covered by the class in any event, will not be acceptable. This is because the party will be seeking to exclude goods/services which are not covered by its specification.

Additional points to consider

18. If a restriction is expressed as relating to “all of the aforesaid” then the applicant should ensure that it does, in fact, relate to all of the preceding terms. If it does not, then the specification will need to be reconfigured to ensure that the limitation follows only those goods/services to which it relates.

19. Attempting to limit widely applicable terms via reference to their use in a particular setting and/or by a particular customer base is likely to be artificial and, therefore, not acceptable (see Quartz BL O/090/04 at paragraph 26). For example, “Concrete building materials, all for use in relation to a spa”.

20. The scenarios and examples set out at paragraphs 8-19 above are not exhaustive but identify those most often encountered by the Tribunal. Others will undoubtedly exist, and the onus is on the applicant to ensure any restriction complies with the case law and guidance identified in this notice.

Filing Form TM21B in lieu of Form TM8

21. The Tribunal has identified a common practice of applicants filing a Form TM21B in lieu of a Form TM8. This is not an acceptable substitution.

22. The TM8 deadline is statutory and non-extendable and, consequently, a Form TM8 should be filed to protect the applicant’s position, even if the parties have negotiated a settlement and filed a TM21B to reflect that.

23. Until the TM21B has been approved and implemented by the Tribunal, and a withdrawal has been confirmed, the opposition proceedings are still ongoing and should be treated as such.

Addressing and resolving objections to unacceptable restrictions

24. As stated at paragraph 4 above, where a proposed specification restriction has been deemed unacceptable, the Tribunal will not routinely offer alternative wording. However, the applicant will be provided with brief written reasons to support the decision, including the citation of relevant case law and/or principles set out in this notice where appropriate to do so.

25. Whilst the Tribunal would expect all restriction requests to comply with the guidance set out in this notice, we recognise that an acceptable formulation may not be achieved at the first attempt. In these circumstances, the applicant may submit a further revised restriction. Whilst a short sequence of brief written exchanges may be necessary in order to reach the desired outcome, protracted written exchanges and/or repeated requests for further reasoning – particularly where not accompanied by an alternative proposal – are to be avoided, and may result in the Tribunal recommending that a hearing be convened.

26. Where a request has been rejected by the Tribunal and both parties are seeking to resolve the matter, the hearing officer may agree to suspend proceedings for a limited period whilst an alternative formulation is being considered and drafted. Each request will be assessed on its own merits, and hearing officers are likely to look more favourably upon requests which are supported by proof that parties are seeking to address the Tribunal’s reasons for rejecting the initial request. Where, based on previous attempts, the hearing officer considers that further efforts to restrict the specification are unlikely to have any degree of success or material impact upon the proceedings, a suspension request may be refused.

27. Where a suspension request premised on the parties’ attempts to formulate a specification restriction is filed separately from, and in advance of, the submission of a related Form TM21B, the request should always confirm that an appropriate form will follow. This will assist the Tribunal by ensuring that the two complementary documents are linked and considered by the same hearing officer.

Hearings

28. Notwithstanding that a restriction proposal via Form TM21B may apply to an application which is subject to Tribunal proceedings (and which may have been formulated with input from both parties), users should note that a hearing convened specifically in order to address the registrar’s continued rejection of a specification restriction will be ex parte rather than inter partes. This approach reflects the inherently ex parte nature of any request, from the applicant to the Registrar, to amend the list goods or services of a trade mark application.

Additional notes

29. Whilst the above guidance above refers to restrictions filed via Form TM21B in the context of Tribunal proceedings, it also applies to partial surrender requests submitted via Form TM23. Any request to restrict the specification of a registered trade mark will be subject to the same considerations and practice.

30. Equally, trade mark examiners and ex parte hearing officers will apply the same practice (in particular, the guidance set out at paragraphs 8-19 above) when considering restriction requests submitted prior to publication.

Timing

31. This practice will be implemented with immediate effect.