Practice Amendment Notice

PAN 5/07 - Issued 16 July 2007

Deceptive marks and protected/prohibited words

This notice includes reference to a recent ECJ ‘Elizabeth Emanuel’ case C-259/04 [2006 ETMR 56] and contains a general tidying up - without any fundamental change- of the existing practice in relation to Section 3(3)(b).

The notice also updates guidance on protected and reserved words. Reference is now made to: The London Olympic Games and Paralympic Games Act 2006, The Geneva Conventions Amendment Act 1995, and EC Regulation 510/2006. Paragraph 38 has  been amended.

Finally, this notice includes reference to prohibited words in accordance with The Tobacco Products (Manufacture, Presentation and Sale) (Safety) Regulations 2002.

Paragraphs 36, 37 and 38 have been substantially amended. A new paragraph 38.13 is added to cover prohibited words.

36 Deceptive Marks [other than geographical indications]

Section 3(3)(b) of the Act states:

• “(3) A trade mark shall not be registered if it is -
  
  b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origins of the goods or service).”

In Elizabeth Emanuel v Continental Shelf 128 Ltd, Case C-259/04 [2006 ETMR 56], the ECJ stated in paragraph 47 of its judgment that the application of this provision “presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived”. An objection under Section 3(3)(b) should therefore only be raised if in the examiner's view there is a real (as opposed to a purely theoretical) potential for deception of the public.

36.1 Nature

Upon initial examination of an application, it is unnecessary to raise an objection to the mark where there is no realistic possibility of deception. For example, there would be no objection against HARTLEY'S STRAWBERRY JAM for “jam”. It will be assumed that the applicant will either only use the mark on strawberry jam, or he will vary the mark in use (or else will fall foul of the Trading Standards legislation and also rapidly lose customers). If the mark was used deceptively it would be open to revocation under Section 46(1)(d) of the Act.

However, if, in response to an objection under Section 3(1) of the Act, an applicant seeks to exclude goods or services from the specification, the examiner should reconsider whether the mark has now become of such a nature as to deceive the public. For example no objection under Section 3(3)(b) may have been raised at the examination stage to the mark FINANCIAL WORLD for "magazines". It appears to be against any trader’s own interests to use such a mark on anything other than magazines about finance. However, if the applicant seeks to exclude such goods simply to overcome the objection under Section 3(1) of the Act to get his mark on the register, a Section 3(3)(b) objection should be raised.

36.2 When to raise an objection under Section 3(3)(b):

In the main, therefore, Section 3(3)(b) objections at the first examination stage should only be taken to marks which indicate a particular (desirable) quality of the goods (but see also Geographical Indications).

36.2.1 Quality

• ORLWOOLA for "suits", because the public would expect to pay more for suits containing wool;
• STAINLESS SUREFIT for "exhausts", because stainless steel exhausts are better quality, being more durable;
• ARTIC LEATHER for "clothing", because imitation leather is sometimes passed off as leather;
• BRASSRITE for "plumbing fittings", because brass fittings are perceived as being of better quality than plastic ones;
• MOONSILK for "underwear", because silk is more desirable than other fabrics.

In each of the examples listed above, the list of goods should be restricted to reflect the composition of the goods, or the application should be refused.

36.3 Overcoming Section 3(3)(b)objections

Section 3(3)(b) may be overcome by a restriction of the specification. Objections raised under this Section of the Act generally result in the narrowing of the rights in the mark by means of imposing a limitation to the specification of goods/services.

For example:

Mark applied for: Woolpoint

Specification: Suits

Limitation required: "...; all made wholly or principally from wool."

36.4 Prior registration

Where an applicant already has a registration:

• for the same mark;
  
  OR
  
• for a variation to the mark which is no more objectionable under Section 3(3)(b);
  
  AND
  
• for the same goods or services;
  
  AND
  
• without a restriction of the specification.

- no objection under Section 3(3) should be raised.

It is, of course, open to any applicant to challenge the general practice, or to argue that a proposed specification is sufficient to overcome an objection under Section 3(3)(b) of the Act. Any alternative wording suggested by an applicant should be considered on its merits.

37 Deceptiveness – Geographical Indications and Section 3(3)(b)

(See also the main section on Section 3(3)(b) Deceptive Marks)

37.1 When to raise an objection under Section 3(3)(b)

Section 3(3)(b) objections should only be taken at the first examination stage to place names or figurative marks indicating geographical origin where the place has a reputation for the goods or services, for example:

• PIAZZA D' ITALIA for "clothing", because the public would be deceived if the goods or the cloth were not made in Italy, which has a strong reputation for quality cloth and clothing;
• SOMERSET GOLD for "cider", because Somerset is well-known for its cider;
• SWISSTEX for "watches", because Switzerland is famous for high quality watches.Geographical names appearing in trade marks for wines and spirits, such as brandy, also require consideration in relation to deceptiveness: see also the section on “Reserved Words” for Protected Geographical Indications and Designations.

37.2 Overcoming Section 3(3)(b)objections

Section 3(3)(b) may be overcome by a restriction to the specification. Objections raised under this Section of the Act generally result in the narrowing of the rights in the mark by means of imposing a limitation to the specification of goods/services.

Where a specification is being restricted to overcome a deceptiveness objection based upon the origin of the goods/services the specification should be restricted to goods manufactured in the appropriate place for manufactured goods or produced in for other goods, for example:

• SWISSTEX: “Watches and horological instruments; all manufactured in Switzerland”;
• LOCH DOUGLAS: “Salmon and salmon products; all the produce of Scotland”.

37.3 Whisky

The Scotch Whisky Association is concerned about the treatment of marks evocative of Scotland which are sought to be registered in respect of whisky and whisky based liqueurs. A form of wording has been agreed with The Scotch Whisky Association which should be used whenever possible.

Use of the following terms in specifications will avoid/overcome a 3(3)(b) objection to marks which are evocative of Scotland and applied for in respect of a specification which consists of, or includes whisky or liqueurs:

• “Scotch whisky”
• “Scotch whisky based liqueurs produced in Scotland”
• “Alcoholic beverages, but in so far as whisky and whisky based liqueurs are concerned only Scotch whisky and Scotch whisky based liqueurs produced in Scotland".

It is, of course, open to any applicant to challenge the general practice, or to argue that a proposed specification is sufficient to overcome an objection under Section 3(3)(b) of the Act. Any alternative wording suggested by an applicant should be considered on its merits.

37.4 Prior registration

Where an applicant already has a registration:

• - for the same mark;
  
  OR
  
• - for a variation to the mark which is no more objectionable under Section 3(3)(b);
  
  AND
  
• - for the same goods or services;
  
  AND
  
• - without a restriction of the specification.

- no objection under Section 3(3) should be raised (but see the practice under s.3(4) where protected geographical designations is concerned).

38 Protected Words and Other Signs (“Reserved Words”) and Prohibited Words

A range of protected signs which present prima facie grounds for the refusal of trade mark applications on the so-called absolute grounds specified in Section 3 of the Trade Marks Act 1994. There are 4 separate types of protected signs on the Registry’s database:

38.1 Objections based on Protected Signs

For a protected sign in any category to be the basis of an objection, the mark applied for should generally consist of, or contain, an identical sign or a sign which is plainly an imitation of the protected sign. However, the fact that the mark contains certain types of protected sign may not require an objection to be raised if certain conditions are met. (See below).

38.2 Marks Protected under Article 6ter of the Paris Convention or WTO Agreement

Sections 57 and 58 of the Trade Marks Act 1994 cover marks protected under Article 6ter of the Paris Convention and the World Trade Organisation (WTO) agreement. They are divided as follows:

Section 57 - covers national emblems of Convention and WTO countries:

• Flags of a Convention country
• Armorial bearings or other state emblem
• Official sign or hallmark
• Heraldic imitations of any of the above

By way of example, the Court of First Instance found in Case T-127/02, when considering a mark containing a representation with the appearance of the EU flag of a circle of 12 stars, it was not decisive that the stars and background were not identical:

“…. the relevant public may have the impression that it is an imitation, from a heraldic point of view, of that circle.”

(1)(2) and (4) are protected without regard to the type of goods or services. For (3), the onus is on the applicant to show that the type of goods or services for which the official sign or hallmark is used as a guarantee are dissimilar to those for which trade mark protection is sought.

Section 58 - covers emblems etc of certain international organisations:

(1) Armorial bearings, flags or other emblems of international intergovernmental organisations of which one or more Convention countries are members.

(2) Abbreviations and names, of international intergovernmental organisations of which one or more Convention countries are members eg WHO, WTO..

(3) Heraldic equivalent or heraldic imitations of any of the above

In cases where the protected sign is a symbol of an international organisation and the specification of the trade mark application is restricted or so specialised as to make it unlikely that it would suggest to the public that the user has a connection with the international organisation concerned, an objection will not be necessary eg WIPO (World Intellectual Property Office) against an application for the mark WIPO for chimney sweep services.

38.3 Wording of objections – Marks protected under Article 6ter or WTO Agreement

The application is not acceptable: there is an objection under Section 3(5) and Section 4(3) of the Act because the mark consists of, or contains, a specially protected emblem under the provisions of [ Article 6ter of the Paris Convention] (See attached printout).

38.4 Overcoming Objections

The objection may be overcome by obtaining the written consent of the competent authority of the country/organisation concerned to the proposed registration of the mark.

38.5 International Non-Proprietary Names

These are received from the British Standards Institute (BSI) or World Health Organisation (WHO) as a proposed name. The name is searched against the Office`s database of trade marks and the Registrar has the opportunity to raise objections (if appropriate), before the name is protected. Non-proprietary names are generic names for specific substances in the fields of (a) veterinary substances (b) pesticides and (c) pharmaceuticals.

38.6 Objections in Class 5

Applications in Class 5 which consist of a mark identical to (or a trivial variation on) a protected sign in this category are open to objection under Section 3 (1)(b), (c) and (d) where the specification contains: pharmaceutical substances, veterinary substances or pesticides.

Where the trade mark merely contains a reserved word there is unlikely to be an objection. In other words where the protected sign is used in combination with a house mark or another distinctive element e.g. Tesco or Boots, the application would be considered prima facie acceptable.

38.7 Wording objections

The application is not acceptable: there is an objection under Section 3 (1)(b) (c) and (d) of the Act because the mark consists exclusively of the word ”paracetamol” being a generic term for a pharmaceutical product.

Where the application consists exclusively of a protected sign in this category the objection cannot be overcome.

38.8 Protected Geographical Indications– Sections 3(4) (also 3(1)(c) and 3(3)(b))

Section 3(4) of the Act states:

“A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of Community Law.”

There are three EC Regulations which impact upon the examination of geographical indications under Section 3(4) of the Act. These are:

Regulation 510/2006 protects geographical indications and designations of origin in relation to agricultural products and foodstuffs;

Regulation 1493/99 protects those used in relation to wines and Regulation 1576/89 protects those used in relation to spirits.

Protected Geographical Indications are terms used in the course of trade to establish an association between a place and certain goods in order to evoke a quality standard and to benefit from the region’s good reputation; for example, Roquefort for cheese and Champagne for sparkling wine.

A Protected Geographical Indication constitutes a collective right, subject to certain conditions, to all those trading in the goods of the geographical area concerned. In order to avoid misappropriation, counterfeiting and misuse, international treaties and national law protect such indications.

38.9 Goods covered by Regulation 510/2006

The Regulation covers:

“Beer; beverages made from plant extracts; bread, pastry, cakes, confectionery, biscuits and other baker’s wares; cheeses; essential oils; oils and fats; fresh fish, molluscs and crustaceans and products derived from them; fresh meat and offal; fruit, vegetables and cereals; meat based products; natural gums and resins; other agricultural products; other products of animal origin, for example eggs, honey.”

A full list of the current goods for which protection has been granted is available on the European Commission website.

38.9.1 Object in Classes 29, 30, 31, 32 and 33

Marks consisting of or containing a Protected Geographical Indication (PGI) or a Protected Designations of Origin (PDO) cannot be registered in respect of products which are not entitled to use the PGI/PDO but which are of the same category of goods. For example, a PGI/PDO for milk cannot be registered as a trade mark for cheese.

If an application for a trade mark (other than a certification or collective trade mark) consists of a protected sign and covers the same product for which the Geographical Indication is protected, objection should be taken under Section 3(1)(b) and (c), Section 3(3)(b) and Section 3(4) of the Trade Marks Act. If the mark contains a PGI/PDO, eg a label mark including a trade mark and a PGI or PDO, eg, the words “Dorset Blue” (which is a protected geographical indication for cheese), and the application covers the same product [in this case cheese], then objections under Section 3(3)(b) and 3(4) would be appropriate.

38.10 Wording Objections

Section 3 (1)

The application is not acceptable: there is an objection under Section 3(1)(b) and (c) of the Act because the mark consists exclusively of the word “Dorset blue” being a protected designation of origin for e.g Dorset blue cheese, being a blue cheese originating in Dorset.

Section 3 (3) (b)

The application is not acceptable: there is an objection under Section 3(3)(b) of the Act because the mark contains or consists of the geographical indication Dorset Blue, which is liable to deceive the public in the U.K. if used in respect of cheese products other than cheese products entitled to the geographical indication Dorset Blue.

Section 3 (4)

The application is not acceptable: there is an objection under Section 3(4) of the Act because the mark contains or consists of the protected geographical indication Champagne and its use in relation to wines (or products of the same type), other than wines entitled to use the protected geographical indication, would be contrary to law.

38.11 Overcoming Section 3 Objections

Where the mark consists of a Geographical Indication, the Section 3 (1) objection cannot be overcome.

Where the mark contains a protected Geographical Indication in combination with a distinctive sign, the objections under Section 3 (4) and Section 3 (3) (b) can be overcome by limiting the specification to cover only those goods entitled to use the geographical indication in question.

e.g. Wines entitled to the geographical indication Champagne.

If an objection is justified under section.3(4) of the Act (the mark contains a protected geographical indication for relevant goods, or a statement of the geographical origin of a wine or spirit) an objection should be raised under s.3(4) and maintained until the specification is limited accordingly. This is required even where the applicant already has a similar mark registered for the goods or similar goods without a geographical restriction.

38.12 Signs Protected under National Legislation

These include: The Red Cross; The Civil Defence Sign; the Olympic word, the Olympic symbol; the Paralympic word, the Paralympic symbol: Anzac.

38.12.1 Red Cross

The red cross symbol, words “Red Cross”, the red crescent symbol, the words “red crescent” and the red lion and sun symbol, the words “red lion and sun” and the Swiss heraldic emblem are all protected under Section 6 (1) of the Geneva Conventions Act 1957.

Given the special significance of these symbols use of the above within the UK must be authorised by the Ministry of Defence.

Trade mark applications consisting of or including the following are open to objection under Sections 3(4) and 3(5) of the Trade Marks Act 1994 for all goods and services:

(a) the words Red Cross, Geneva Cross, Red Crescent or Red Lion and Sun;

(b) phonetic equivalents of the words Red Cross, Geneva Cross, Red Crescent or Red Lion and Sun, for example applications such as Redd Kross or Red Kresent or red lyon and son, or a visual combination of a word and a symbol

eg Red + or Red X.

(c) the emblem of a red cross with vertical and horizontal arms of the same length on, and completely surrounded by a white ground;

(d) the emblem of a red crescent moon on, and completely surrounded by, a white background;

(e) the lion and sun emblem in red on, and completely surrounded by, a white back ground, that is to say, a lion passing from right to left of, and with its face turned towards the observer, holding erect in its raised right forepaw a scimitar, with, appearing above the lion's back, the upper half of the sun shooting forth rays;

(f) any design consisting of a white or silver cross with vertical and horizontal arms of the same length on and completely surrounded by, a red back ground, being the heraldic emblem of the Swiss Confederation, or any other design so nearly resembling that design as to be capable of being mistaken for that heraldic emblem;

g) any design so nearly resembling any of the emblems specified above as to be capable of being mistaken for, or, as the case may be, understood as referring to, one of those emblems.

38.12.2 Cross devices not in Red and White

Applications made in black and white, which contain the device of a cross, or a crescent moon or lion and sun, will not attract objection. However when such applications are received, examiners must ensure that a copy of the Red Cross Society's leaflet regarding the protection of such symbols is sent out with the examination report.

Green crosses on a white background are generic for pharmacy and medical goods and services. White crosses on green backgrounds are generic for first aid goods and services, and are based on European Union legislation.

38.12.3 International Civil Defence sign

The International civil defence sign consists of an equilateral blue triangle completely surrounded by an orange background, as illustrated below;

Use of the above sign within the UK requires the consent of the Secretary of State for Defence under the provisions of Section 6.(1) of the Geneva Conventions Amendment Act 1995.

Use of any sign capable of being mistaken for the above sign within the UK requires the consent of the Secretary of State for Trade, under the provisions of Section 6(2) of the Geneva Conventions Amendment Act 1995. (responsibility for such approval has been devolved to The Patent Office). However it is unlikely that approval will be given.

Trade mark applications consisting of the above or containing any sign so nearly resembling the sign as to be capable of being mistaken for the sign are open to objection under Sections 3(4) and 3(5) of the Trade Marks Act 1994 for all goods and services:

38.12.4 Olympic and Paralympic Symbol or Word

The Olympic

and Paralympic symbols,

Olympic motto (Citius, Altius, Fortius which means Faster-Higher-Stronger) and Paralympic motto (Spirit in Motion) and the words Olympic(s), Paralympic(s), Olympian(s), Paralympian(s), Olympiad(s) and Paralympiad(s) are protected under the Olympic Symbol, etc (Protection) Act 1995 as amended by the London Olympic Games and Paralympic Games Act 2006, which came into force on 30 March 2006. Protection extends to signs which are sufficiently similar to the Olympic/Paralympic Symbol the Olympic/Paralympic motto or the words Olympic(s), Paralympic(s), Olympian(s), Paralympian(s), Olympiad (s) and Paralympiad(s) as to be likely to create in the public mind an association with those signs. Where an application is made consisting of or containing the Olympic/Paralympic symbol or words, examiners should object under Section 3 (4) and Section 3(5) of the Trade Marks Act.

38.12.5 London Olympics Associationl

The following group of words are listed under the London Olympic Games and Paralympic Games Act 2006, in the context of a provision prohibiting the unauthorised association with the London Olympics.

Group 1

• Games
• Two Thousand and Twelve
• 2012
• twenty twelve

Group 2

• Gold
• Silver
• Bronze
• London
• Medals
• sponsor, and
• Summer

The use of any combination of words listed in Group 1 with those listed in Group 2.used in connection with any trade, business or profession, without the permission of the London Olympics Association, may lead to an unlawful association, but the words are not protected as such, and there are various defences available which protect justified association with the games, consequently it is not appropriate to object to a trade mark application simply because it includes a combination of these words of special interest.

38.12.6 Anzac (Australian and New Zealand Army Corps)

Anzac is protected under the Anzac (Restriction on Trade Use of Word) Act 1916. An offence is committed if the word ANZAC is used in connection with any trade, business or profession, without the authority of The Secretary of State for Trade and Industry. Where an application is made consisting of, or containing, the word Anzac, examiners should object under Section 3 (4) and Section 3(5) of the Trade Marks Act.

38.12.7 Wording of objections in respect of signs protected under National Legislation

The application is not acceptable: there is an objection under Section 3(4) and Section 3(5) of the Act because the mark consists of, or contains, a controlled representation, whose use is prohibited in the United Kingdom by rule of law. (The relevant law must be identified, e.g. the Olympic Symbol etc (Protection) Act 1995 as amended by the London Olympic Games and Paralympic Games Act 2006)

38.12.8 Overcoming objections in respect of signs protected under National Legislation

Red Cross – Objections raised for marks in this category cannot be overcome if they are shown in the colours red and white.

Olympic/Paralympic symbol, etc- An objection may be overcome by obtaining the written consent of the British Olympic Association which is the proprietor of the Olympics Association Right.

ANZAC - An objection may be overcome by obtaining the written consent of the Secretary of State for Trade & Industry.

38.13 Prohibited words

38.13.1 Tobacco Descriptions in Trade Marks

The Tobacco Products (Manufacture, Presentation and Sale)(Safety) Regulations 2002 state :

11.-(1) No person shall supply a tobacco product the packaging of which carries any name, brand name, text, trade mark or pictorial or any other representation or sign which suggests that that tobacco product is less harmful to health than other tobacco products .

This implements Directive 2001/37/EC of the European Parliament which states at paragraph 27 :

“The use on tobacco product packaging of certain texts, such as ‘low-tar’, ‘light’, ‘ultra-light’ , ‘mild’, names, pictures and figurative or other signs may mislead the consumer into the belief that such products are less harmful and give rise to changes in consumption.”

38.13.2 Wording objections in respect of words prohibited under tobacco regulations.

This application is not acceptable: there is an objection under section 3(4) of the Act because the mark contains words prohibited by The Tobacco Products (Manufacture, Presentation and Sale)(Safety) Regulations 2002. This implements Directive 2001/37/EC of the European Parliament which states at paragraph 27:

“The use on tobacco product packaging of certain texts, such as ‘low-tar’, ‘light’, ‘ultra-light’ , ‘mild’, names, pictures and figurative or other signs may mislead the consumer into the belief that such products are less harmful and give rise to changes in consumption.”

38.14 Registration and Use of the Same or Similar Trade Marks for Tobacco and Non-Tobacco Products

38.14.1 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:

a) 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));

b) 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);

c) 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/similar mark on tobacco and non tobacco products/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/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, e.g. 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/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.