Practice Amendment Notice

PAN 5/05 - Issued 6 September 2005

This notice affects Examination practice about trade mark applications covering tobacco products or applications for trade marks which cover non-tobacco products where the trade mark is the same or similar.

This is a new practice and therefore the following paragraphs have been added.

38.13 Registration and use of the same or similar trade marks for tobacco and non-tobacco products

38.13.1 The Brandsharing Regulation

The Tobacco Advertising and Promotion (Brandsharing) Regulations 2004 (the Brandsharing Regulation) came into effect on 31 July 2005. Paragraph 3(1) of the Regulation prohibits the use in the course of a business in the UK in relation to a non-tobacco product or service, of any feature which is the same as, or similar to, a feature connected with a tobacco product - if the purpose or effect of that use is to promote a tobacco product.

A feature of branding which is likely to be mistaken for one used for a tobacco product is a "similar" feature for this purpose.

Paragraph 3(2) of the Regulation similarly prohibits the use of a feature for tobacco products where that feature is connected with a non-tobacco product and the purpose or effect of the use is to promote a tobacco product through an association with a non-tobacco product or service.

It is not necessary for a trade mark for tobacco products and other products or services to be owned by one party before its concurrent use on the respective products and services is capable of being prohibited under the Brandsharing Regulation.

Exceptions

The prohibitions in the Regulation are subject to a number of exceptions. The exceptions in paragraph 5 of the Regulation cover lawful advertising of tobacco products on goods such as display units and gantries at places where tobacco products are sold, and on vending machines for tobacco products.

The exceptions in paragraph 4 of the Regulation cover situations where the effect of the use is to promote a tobacco product, but the use:

• could not reasonably have been foreseen to have the effect of promoting a tobacco product through an association with a non-tobacco product or service (paragraphs 4(1) and 4(5));
  
• is not by a person who has a direct or indirect economic connection with a tobacco producer or promoter (see paragraphs 4(2) and 4(6) of the Regulation for full details);
  
• commenced in the EEA before 1 September 2002 and the presentation of the feature in question does not make it appear that the non-tobacco product or service belongs to the same brand as any tobacco product (paragraphs 4(3) and 4(7));

All the exceptions described above are subject to the further condition that the person using the feature in question does not do so for the purpose of promoting a tobacco product.

Paragraphs 4(4) and 4(8) of the Brandsharing Regulation contain further exceptions covering the situation where the person using the feature does not know that the purpose or effect of using the feature is, or is likely to be, to promote a tobacco product, and the use does not make it appear that the same person, firm or company is responsible for the branding of both the tobacco product and the non-tobacco product or service, whether that is in fact so or not (paragraphs 4(4) and 4(8)).

The Registrar’s Practice

Applications by the same party to register the same or similar trade marks for tobacco and non-tobacco products and services

The registrar’s examiners will not normally be able to determine, without evidence, whether the effect of the proposed use of the same or similar mark on tobacco and non-tobacco products or services is to promote tobacco products. Further, the use the applicant proposes may be covered by one of the exceptions listed above.

Furthermore, the registrar’s examiners will rarely be in a position to determine whether the applicant’s purpose in proposing to use a mark for both types of products or services is to promote tobacco products through an association with a non-tobacco product or service.

Accordingly, the registrar will not normally object to the registration of a trade mark on the grounds that the proposed use of the mark would be an offence under the Brandsharing Regulation.

There may, however, be a few cases in which it is obvious that the purpose or effect of the proposed use of the mark will be to promote tobacco products, eg, an application to register a well known tobacco brand for motor racing services. If the examiner believes that the facts are so self evident as to remove any reasonable doubt as to the purpose or effect of the proposed use, he or she will object to the registration of the trade mark for the second class of products. The objection will be based on 3(4) of the Trade Marks Act, which prohibits the registration of a trade mark where its use would be contrary to law.

Trade marks which are accepted and published may still, of course, be opposed by third parties on these grounds, who may file evidence in support of their case.

Whether the use of a trade mark offends the Brandsharing Regulation must be determined as at the date of the application for registration. The registrar’s provisional view is that the registration of a trade mark from a date earlier than the date of commencement of the Brandsharing Regulation cannot be subject to an application for invalidation on the ground that use of the mark would now be contrary to the Brandsharing Regulation.

However, the absence of grounds to invalidate a trade mark registration (because the application for registration pre-dates the date of commencement of the Brandsharing Regulation) does not mean that the provisions of the Brandsharing Regulation are inapplicable to the subsequent use made of that trade mark.

Article 106(2) of the Community Trade Mark Regulation 40/94 would appear to have a similar effect in that registration of a Community trade mark will not prevent the prohibition of the use of that mark in the UK in ways that are contrary to the Brandsharing Regulation.

Search for other relevant trade marks

Applications filed on or after 31 July 2005 for tobacco products in Class 34 will be subject to an additional search for the goods and services in all other classes.

Applications filed on or after 31 July 2005, which do not include tobacco products will also be subject to an additional search to establish whether the same or a similar trade mark has been registered for tobacco products.

The object of the search will be to identify any other trade mark which is the same as, or so similar to, the trade mark in the application and is registered (or applied for) in respect of tobacco or non-tobacco products (as the case may be).

Any relevant trade marks will be drawn to the attention of the applicant in the examination report and his attention will be drawn to the Brandsharing Regulation. The purpose of doing this is to inform trade mark owners of the new restrictions on brandsharing so that they can take these into account when making decisions about the future uses they make of the trade mark applied for.

The registrar will not (other than in the circumstances described above) offer an opinion as to whether any particular use is or is not contrary to the Brandsharing Regulation.