Practice Amendment Notice

PAN 8/07 - Issued 1 October 2007

This notice affects Examination practice about:

Section 5 : Relative Grounds : Notification

This PAN replaces paragraphs 49 to 58 of the Examination and Practice Work Manual, Chapter 3, in their entirety. This also results in the subsequent paragraphs (59 to 62) being renumbered as 60 to 63. The Notice reflects the new Notification system introduced with effect from 1 October 2007.

49 Section 5: Relative Grounds: Notification

From the 1st October 2007 the registrar will only be able to refuse an application on a ground mentioned in Section 5 of the Trade Marks Act 1994 if opposition on that ground is raised (successfully) by the proprietor of the earlier mark or sign. The practical effect of this is that earlier trade marks will no longer constitute a barrier to the acceptance of an application at examination stage. It will instead be up to the owners of earlier marks to decide if they wish to challenge the acceptance of the application through opposition.

Irrespective of the above, a search for earlier marks will still be conducted at examination stage and the results of it passed to the applicant for registration. This will enable the applicant to make an informed choice as to whether or not to proceed with his application and to assess the risk of doing so. If the applicant continues with his application the owners of any earlier marks identified in the search will be notified (via his address for service) about the existence of the new application when it is subsequently published in the Trade Mark Journal.

Essentially, the same tests will be applied for this notification regime as were applied for the previous "citing" regime (whereby applications would be blocked by an earlier trade mark). The test being whether the similarities between the respective trade marks and their goods and services would lead, in the registrar’s opinion, to a likelihood of confusion.

The following paragraphs set out the guidance which applies in deciding whether or not the earlier trade mark owner should be notified about the existence of the new application. However, it should be noted that a decision to notify (or not) has no bearing whatsoever on any subsequent opposition case which may be received. It should also be noted that notifications will not be issued in relation to possible grounds under Section 5(3) or 5(4) of the Act as the registrar’s examiners can not know whether grounds for these objections exist.

An earlier trade mark is a trade mark (registered or pending) with an earlier date of filing, priority or seniority than the trade mark under examination. Where the earlier mark is still pending, then it is an earlier mark "subject to it so being registered". It also includes International trade marks (UK and EC), Community trade marks and well known marks protected under Section 56 of the Act.

49.1 Section 5(1)

This section of the Act is concerned with conflicts where the marks are identical and the goods or services are also identical. The ECJ, in its judgment in the LTJ Diffusion SA v. Sadas Vertbaudet SA case, C-291/00, said that "a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer."

This approach was followed by the English Court of Appeal in the Reed v. Reed case, [2004] EWCA (Civ) 159. Jacob LJ also gave guidance on how identity of specifications should be determined, specifically services in this case. In recognising that "a service provider of one sort is apt to provide a range of particular services some of which will be common to those provided by a service provider of another sort", he said it was important to identify what are the core activities of the provider, rather than giving a wide interpretation of the specification of the registered mark.

When performing a relative grounds search for conflicting marks, an earlier mark will be considered identical if:

a) all the elements are the same, or the differences between the two are so minor that the average consumer is unlikely to notice them;

and

b) the specifications cover identical goods or services. In deciding the meaning of particular terms in the specifications, examiners should not "stretch" the meaning of the terms to cover all eventualities, but should give the terms their ordinary natural meanings.

If only a) or b) is present, the objection will fall under Section 5(2) rather than 5(1).

49.2 Section 5(2)(a) and (b)

Section 5(2) of the Act implements Article 4(1)(b) of the 1988 Directive 89/10/EEC.

The European Court of Justice (ECJ) has provided guidance in the form of four judgements on cases which were referred to the Court from differing national jurisdictions. These are:

• Sabel BV v Puma AG [1998] ETMR. 1
• Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] ETMR 1
• Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. [2000] FSR. 77
• Medion AG v Thomson multimedia Sales Germany & Austria Gmbh, Case C-120/04.

49.3 Similarity of goods/services

In determining the degree of similarity between the respective goods/services, the following should be taken into account:

• Nature of the goods/services
• The intended purpose of the goods or services
• Method of use
• Whether the goods/services are in competition
• Whether they are complementary

49.4 Similarity of marks

The visual, aural and conceptual similarities (and differences) between the marks must be assessed and an overall assessment made about the degree of similarity and difference between the marks.

The question is not whether the marks are similar under any one of the above headings (although that might be enough to create a likelihood of confusion in some circumstances) but what is the overall extent of the similarities and differences. In this connection, it should be noted that similarity/difference under one head, e.g. conceptual similarity/difference, can increase or reduce the effect of similarities or differences under other heads, e.g. visual or aural similarity.

In assessing the degree of aural similarity between two marks one is mainly concerned with word marks or word elements, although pictures with an obvious aural description may also give rise to a degree of aural similarity.

The respective marks must be compared as wholes because the average consumer normally perceives marks as a whole and does not proceed to analyse their various details.

Nevertheless, it should be borne in mind that although the consumer normally perceives marks as a whole, his or her recollection of them is likely to focus on their dominant and distinctive components.

Non-distinctive similarities should not be ignored altogether if they comprise a significant part of the respective marks, but distinctive similarities should be given more weight.

Non-dominant but distinctive elements may also give rise to a material degree of similarity between the marks where trade mark A is subsumed within trade mark B and yet retains an independent and distinctive role within trade mark B.

49.5 Likelihood of confusion

Likelihood of confusion means that it is more likely than not that confusion will arise in the mind of the average consumer for the goods/services at issue.

Likelihood of association is not an alternative to likelihood of confusion, "but serves to define its scope". Mere association, in the sense that the later mark brings the earlier mark to mind is insufficient to find a likelihood of confusion, unless the average consumer, in bringing the earlier mark to mind, is led to expect the goods or services of both marks to be under the control of one single trade source. “The risk that the public might believe that the goods/services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion” (Canon).

49.6 Global comparison

The main emphasis in Sabel is the idea that no single factor will lead to a conclusion that there is or is not a likelihood of confusion between marks, a theme shared by the judgements which followed. In Sabel, the Court decided that:

“The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case.”

The three most relevant factors in examination of trade mark applications by the Office will usually be:

• i) the similarities and differences between the respective trade marks,
• ii) how distinctive the earlier mark is, and
• iii) the degree of similarity between the respective goods or services. Once an initial assessment of the individual factors has been undertaken, all three factors must be considered together in order to assess the overall likelihood of confusion.

These factors are interdependent. "A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa" (Canon). And, "…the more distinctive the earlier mark, the greater will be the likelihood of confusion."(Sabel).

The weight given to visual, aural and/or conceptual similarities and differences between the marks will vary depending upon the goods or services at issue. For example, purchase of clothing is likely to be on the basis of visual selection, whilst over-the-counter medication or leisure club classes may be purchased orally, rendering the aural comparison paramount (Lloyd). In the case of conceptual comparison, "It is ….not impossible that the conceptual similarity resulting from the fact that the two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier trade mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public." (Sabel).

It is clear from an analysis of the case that the ECJ had very highly distinctive marks in mind, such as a representation of a monkey playing a piano, where the very distinctive common idea behind the marks is likely to outweigh any visual differences in the respective representations of the idea in the perception of the average consumer. Other than in exceptional cases such as this, mere conceptual similarity will be insufficient to give rise to a likelihood of confusion.

During ex officio examination the examiner can only have regard to the inherent distinctive character of the earlier mark; enhanced distinctiveness can only be assessed through evidence of reputation, and this is more appropriate to inter-partes proceedings.

49.7 Where Trade Mark A is subsumed within Trade Mark B

In the case of composite marks comprised of two or more distinctive elements, it will often be difficult to determine that any one of those elements is dominant.

The most obvious example is that of a full name such as ‘Alexander Morgan’, where both elements contribute roughly equally to the origin identification message sent by the composite sign, which therefore depends upon the presence of both elements. Accordingly, the registrar would not normally regard the marks ‘Alexander’ or ‘Morgan’ as being in conflict with the mark comprised of the full name, even if the respective goods are the same.

Nevertheless, there may be cases even of this type where one part of the name will be seen as the dominant and distinctive feature. For example, in the full name ‘Tony Copland’, the surname is rare whereas the forename is common. The surname therefore contributes more to the distinctive character of the mark than the forename. The owners of the ‘Tony Copland’ mark should therefore be notified of ‘Copland’ alone and vice versa (subject to the respective goods/services being identical or at least closely similar) on the basis that ‘Copland’ is the dominant and distinctive feature of ‘Tony Copland’. But the owners of the mark ‘Tony’ would not be notified of the mark ‘Tony Copland’, or vice versa.

Where trade mark A is incorporated into trade mark B in such a way that it cannot be said to be a dominant element of trade mark B, there may still be a likelihood of confusion where:

i) the respective goods or services are identical or virtually so, and

ii) the element which corresponds to trade mark A retains an independent role within trade mark B, and

iii) the common element is not prima facie lacking or low in distinctive character.

If mark A has limited distinctive character it is less likely that its mere inclusion in mark B will cause relevant consumers to suppose that the users of the respective marks are economically linked. In this connection, it is noted that the ECJ’s guidance in its judgement in the Medion case assumed that mark A was of "average" distinctiveness.

In the example below, the dominant element of the trade mark is probably the word ‘Catania’.

However, the word ‘Schachenmayr’ retains an independent and distinctive role within the composite mark. Accordingly, if a third party applied to register ‘Schachenmayr’ (or nomotta) for the same goods, it would be appropriate to notify the owners of the above composite mark (or vice versa). This is because the presence of the independent ‘Schachenmayr’ element in the composite mark would be likely to result in consumers expecting there to be an economic link between the undertaking responsible for the goods sold under that mark and the same goods sold under the mark ‘Schachenmayr’ alone .

Where the composite mark appears to comprise of the name or another means of identifying the undertaking responsible for the goods/services combined with a product name, both should be regarded as playing an independent and distinctive role within the composite mark. Accordingly, (again assuming identical goods/services but different proprietors ) it is likely that the owners of the mark ‘BJ’s Matrix’ would be notified of the marks ‘BJ’s’ and ‘Matrix’.

However, examination of composite marks should not be reduced to a search to find one mark within another. The more the elements of the composite mark ‘hang together’ the less likely it is that the individual elements will have an independently distinctive role within the composite mark. For example, the element POLO is not an independently distinctive element within the composite trade mark ROYAL BERKSHIRE POLO CLUB because the words ’hang together’ as a name. The word POLO does not therefore stand out as having its own independently distinctive role within the composite mark.

Further, it is possible for a word to be subsumed within a multiple word mark even though the words do not combine to form a totality with an obvious meaning. For example, it would be difficult to say that the word ‘targets’ has an independent and distinctive role in the composite mark ‘Fashion Week Targets Friday’ (for clothing). Consequently, it is not likely that it would be held to be in conflict with the mark ‘Targets’ solus (again assuming same goods) because it is not the dominant element of that mark, and neither is it an independent and distinctive element of the composite mark.

The most difficult case is where mark A (in the example given below CAREAID) is included in a two word composite mark B, such as SPINESPAN CAREAID (for medical services) where the two elements of mark B would appear to the consumer to be a) normally distinctive, and b) entirely independent of each other. If the respective goods/services are also identical, it is quite likely that the relevant consumer will assume that the inclusion of the CAREAID mark as an element in the composite mark SPINESPAN CAREAID is indicative of an economic connection between the undertakings using the marks. Notification of the later mark would therefore be justified if the marks are in different ownership.

49.8 The average consumer

The global appreciation of the likelihood of confusion must be made through the eyes and the ears of the "average consumer". The average consumer will depend upon the type of goods or services in question, so that this may include members of the trade as well as of the general public. He/she is "deemed to be reasonably well informed and reasonably circumspect and observant - but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind" (Lloyd). The consumer’s level of attention is likely to vary according to the category of goods or services, e.g. closer attention will be paid to the purchase of engineering equipment than is likely for everyday items such as foodstuff.

49.9 Notional and fair use

This refers to use across the range of goods/services claimed in any way that would be considered to be normal use of the trade mark in relation to the goods or services in question. Notifications should not be waived on the basis that the goods/services will only be sold in a certain environment, or in a specific price range, or that the mark will only appear in a certain way in connection with the goods/services. Trade Mark proprietors are free to change the way they market goods/services and they can assign marks which may then be used however the new proprietor sees fit.

49.10 Disclaimers

Where the only component of the earlier trade mark which could be regarded as creating a similarity with a later trade mark is the subject of a disclaimer to any exclusive right, the examiner will not consider the marks to be similar enough to create a likelihood of confusion.

The Registrar will treat a disclaimer as an admission that the disclaimed component of the earlier mark is not, by itself, distinctive of the proprietor’s goods and/or services. In that case, its presence in another party’s trade mark cannot give rise to a likelihood of confusion. The disclaimed component(s) of the earlier trade mark may still contribute towards confusion between the marks and therefore a requirement for the Registrar to notify the owners of the earlier mark where there are other similarities between the respective trade marks.

An applicant’s offer to disclaim exclusive rights to a component of his (later) trade mark will not assist in overcoming a requirement to notify because an admission made by the applicant cannot, of itself, be deemed to affect the scope of protection of the earlier trade mark. Of course, if the applicant can show that the feature shared by the marks is in fact non-distinctive, the notification requirement will be reviewed.

49.11 Section 5(3)

This may prevent registration of a mark which is identical with or similar to an earlier mark which has a reputation. This will not be dealt with at the examination stage. It will be up to the proprietor of the earlier mark to prove reputation in opposition proceedings.

49.12 Section 5(4)

This prevents registration of a mark the use of which at the date of application [or priority] would have been prevented by any rule of law e.g. passing off, and also because of any other earlier right, such as copyright, design right or registered design. Section 5(4) can only be determined on the basis of evidence filed in opposition or invalidation proceedings.

49.13 Families of Marks

Simon Thorley QC, acting as the Appointed Person, gave consideration to this point in the "Ener-Cap" appeal, 1999 RPC 362, believing the question of "families of marks" to be irrelevant to Section 5(2)(b) but that it could be relevant to an argument under 5(4) of the Act.

If a search reveals a number of marks in the same ownership with common identical elements, they should not be regarded as confusingly similar to the mark being examined on this count alone; to do so, would be to assume a degree of reputation in the common feature of the earlier marks. Reputation cannot be considered at the ex parte stage because this is only appropriate as a matter for consideration under opposition. It cannot be assumed in the prima facie that any or all of the marks are even in use at the date of application. Consequently, where similar marks in the name of the same party are identified in a search, they should be compared with the later mark sequentially, not collectively.

Of course, there may be a case for the Registrar notifying the owners of all or some of the earlier marks on other grounds. For example, company A has registered marks including "Portakabin", "Portaloo", "Portahouse", "Portatank" and "Portasafe", and company B has applied for "Portahome". The Registrar would not notify the owners of all the registered marks but only those, if any, that are individually confusing, i.e. Portahouse, on the grounds of visual and conceptual similarity.

There may also be cases where the common feature of the earlier marks is so inherently distinctive that its inclusion in the later mark is sufficient to give rise to a likelihood of confusion, notwithstanding the differences in the marks. For example, ZIGGOOSUR v ZIGGOOTAN; in this case the existence of other similar earlier marks in the name of the same party, eg ZIGGOONOR, will not add to the case for notifying the owners of ZIGGOOSUR.

49.14 Retail Services: search of the Register

In case C-418/02, Advocate General Phillipe Leger opined [agreeing with communication No. 3/01 from the President of OHIM] that “the risk of confusion between [retail] services and the products, if it cannot be excluded, is nevertheless improbable except in particular circumstances, for example when the respective marks are identical or almost identical and well established on the market.”

The ECJ did not feel the need to answer the referring court’s question about the scope of protection of retailers’ marks and so there is no definitive statement of law. Nevertheless, the Advocate General’s Opinion is of persuasive value. In the light of it we will consider notifying the earlier right holders in the course of official examination where:

• a mark is registered (or proposed to be registered) for retail services (or similar descriptions of this service) connected with the sale of specific goods or types of goods;
• another mark is registered (or proposed to be registered) by a different undertaking for goods of the type expressly mentioned in the specification of the retail services trade mark;
• the earlier trade mark has at least a normal degree of distinctive character, i.e. marks with low distinctive character, such as, for example, common surnames, need not be cited;
• the later trade mark is not just similar to the earlier mark but is identical or virtually identical to it, or contains a dominant and/or independently distinctive feature of it.

The reputation of the earlier trade mark and (unless it is obvious) the practices of the trade will only be taken into account on the basis of evidence in opposition or invalidation proceedings.

In view of these factors, we will conduct a search for earlier trade marks as detailed in the guide to cross searching . (See Cross Search List on this website.)

50 International Convention (I.C.) priority claims

Under Section 35, a person who has filed an application for protection of a trade mark in a country party to the Paris Convention has a right of priority during a period of six months from the date of filing of the foreign application. The effect is that if, within that period, he files an application to register the same trade mark under the 1994 Act, his application takes precedence over another application which has an earlier filing date, but a later priority date. Similarly, Section 36 refers to countries which are not a party to the Paris Convention, but with whom the UK has an agreement for reciprocal protection of trade marks. A priority claim may relate to all the goods/services covered by an application or just some of them - perhaps a whole class, or maybe just one item within a 42-class application. There may also be several different partial priority claims included within an application covering different goods or services (there can only ever be one priority claim for particular goods/services).

50.1 Claiming priority and filing the documents

All priority claims should be included on the TM3 at the time the application is made (Rule 6(1)). Each claim has to be listed and must give details of the date, the country from which priority is claimed and the relevant reference number of that priority. If the documents are not filed with the TM3 they should be filed within three months (Rule 6(2)). This period is extendable under Rule 62, even retrospectively, subject to proper reasons being forthcoming for the extension.

If the documents are not filed before the examination report is issued and the three month period from the date of filing has expired, the report should include the standard paragraph informing the agent/applicant that the IC. claim has lapsed. The case should be diaried for one month and if a late extension of time request is not forthcoming OPTICS should be amended by deleting the IC date. Any late request for an extension should include an explanation as to why no extension of time was sought within the period allowed for filing the IC documents.

In most cases, the examination report is likely to be sent out within that three month period. If this is the case, the other standard paragraph should be used, requesting that the documents be filed. In the POSTPERFECT trade mark case (unreported at the time of writing), Geoffrey Hobbs QC upheld a decision of the Registrar that the submission of IC documents is not a requirement for registration under Section 37 of the Act. The consequence of not filing IC documents is that the claim lapses.

50.2 Checking the priority claim

The earliest I.C. claim will be recorded for search purposes. The claim will only be examined in greater detail if the date claimed makes any difference when considering relative grounds for notification purposes.

Certain checks will, however, have to be carried out for every claim. Where there are several claims in respect of a single application this means checking several sets of documents.

There are two types of checks:

• a basic check which must be carried out on all IC claim cases, and
• a more rigorous check which is only carried out where the IC claim may assist in allowing an application to proceed without the need to notify the owners of an earlier mark.

50.3 The Basic Check

This does not require translation documents. The purpose of checking the documents is simply to establish that there are no obvious discrepancies. The check should ensure that the details on the TM3 and the priority documents correspond in respect of the following:

• the mark is the same;
• the applicant is the same;
• the date is the same and it is within six months of the filing date of the
• application; and
• one of the classes on the documents corresponds to one of the classes on theTM3.

In certain cases, it may not be possible to check all four of these criteria e.g. the documents may have been filed (without a translation ) in Japanese, so it may not be possible to check that the applicant is the same. This does not mean that a translation should be requested. The important thing is that there are no discrepancies apparent on the face of the documents.

50.4 The "Rigorous" Check – if a later filed application is identified in the search with a priority date which is earlier than the filing date of the application being examined and is considered to be confusingly similar

Where possible, examiners should obtain the file of the later filed application. This will not be possible where the later filed application is an OHIM mark or an international mark claiming the priority date on the base application/registration(s) in the Country of Origin.

Where the examiner can obtain the files, he or she will check the IC documents to confirm that the priority claim is justified, and for which goods/services. If necessary a certified translation of the priority documents may be required from the party seeking to rely on it.

If it is not possible to obtain the file of the application with the priority claim, the application with the earliest filing date should be allowed to proceed to publication (subject to other requirements).

Once the priority claim has been substantiated the application with the priority claim should be allowed to proceed for all the goods/services covered by the priority claim and for any similar goods/services without the need to notify an ‘earlier filed’ mark.

If there are any other goods/services in the application with the earliest filing date, it may be allowed to proceed for these goods and services without the requirement for notification once the conflicting goods/services have been deleted or separated out through division of the application.

50.5 Seniority Claims

It is possible for an OHIM application to claim a seniority date from an earlier UK registration. In practice, the earlier UK registration will be found in addition to the later-filed OHIM application when a UK application is searched.

50.6 Assignability of rights to International Priority

It should be noted that priority rights are assignable. See Section 35(6) of the Trade Marks Act 1994. If the priority documents show a different party to the applicant we should ask for an explanation. If the answer is assignment then we will need to see a copy of the assignment document.

50.7 Marks with the same priority/filing date

The Act is very specific about earlier marks, but does not mention marks that may have the same filing (or priority) date. If a confusingly similar application is therefore found that was filed on the same day (or has the same priority date) as the application being searched, the applicant should be notified of the potential conflict in the examination report and their attention drawn to the procedure for requesting information. They should also be informed that the Registrar does not intend to take any further action - both marks will be advertised in the Journal and the two parties will have to determine any conflict by way of opposition proceedings. If there is no opposition to either application they will both proceed to registration. Similar considerations will apply where two parties have the same priority date by virtue of an International Convention (I.C.) date. However, if the I.C. claim does not cover all the goods/services it is likely that the applicant with the earliest filing date will have priority in respect of at least some of the goods/services. The application with the earliest filing date will be raised as a cite in these circumstances.

51 Where there are potential earlier rights to be notified but the applicant has an identical ‘earlier trade mark’

In the past, applicants have been allowed to proceed to publication in the face of an earlier mark where the applicant is also the proprietor of a trade mark which predates that earlier right (‘leapfrogging’), providing that certain criteria were met. In future, the owners of all earlier marks identified in a search will be notified of the later application. It will be for the parties to decide how they wish to proceed.

52 Where the owner of an application has previously consented to the registration of an earlier right or have an earlier mark with a later date but which has lived together with an earlier right for some time

It sometimes occurs that the proprietor of an application facing a requirement for an earlier right holder to be notified, has previously given consent to the registration of that earlier mark, as owner of a still earlier trade mark. This will not be taken into account and it will be left for the two parties to decide whether the new application disturbs the earlier position e g if the specification goes wider than the earlier one.

Where the applicant has an existing registered trade mark with a later date than a potential earlier trade mark, but which has lived together with that earlier mark for a period of time, we should still notify the owner of the earlier trade mark about the latest application for the same reasons as given above.

53 Where the earlier trade mark is a Community mark or an International trade mark (UK or EC)

A Community trade mark or an International trade mark (UKor EC) with an earlier date constitutes an earlier trade mark within the meaning of Section 6 of the Act. Accordingly, a similar approach to that set out above may be followed where a UK applicant is faced with an earlier Community trade mark or an International trade mark, but has an earlier identical or similar trade mark. As a Community trade mark may be converted into a national application under Article 108 of Council Regulation 40/94 whilst maintaining its original filing date and priority, and similar provision exists for transforming an International trade mark (UK and EC) into a national application, it does not matter whether the applicant’s earlier trade mark is a national application/registration or an International trade mark or a Community trade mark application/registration.

54 Expired earlier rights

A mark expires when renewal does not take place by the due date (which is the anniversary of the date of application). This fact is published in the TMJ. When 6 months passes the mark is removed from the register - effective from the renewal date. Where a potential earlier right has a status of "expired", it is considered to be no longer on the register and so the owner of that expired mark will not be notified of the new application. (Section 6(3) of the Act states that marks ‘whose registration expires shall continue to be taken into account in determining the registrability of a later mark for a period of one year after the expiry….’ However, as a recently expired mark is no longer a barrier to acceptance, the procedures previously applied e g suspending the later mark until the one year period has passed, are no longer necessary.)

We will, however, advise the applicant of any such cases as some may be reinstated within the one year after expiry. If the earlier right is reinstated prior to the notification letter being prepared the owner of that right will, of course, be notified.

55 ‘Technical notifications’ between companies in the same common ownership

It is likely that large companies will be filing applications for similar marks in the names of their various subsidiary companies, and may wish to overcome the resulting ‘technical notification’ by consent. However, the Registrar will list technical notifications in relation to all earlier right holders during examination and it will be for the applicant to decide whether they wish to pursue consent or simply allow the related company to be notified.

56 Overcoming a requirement to notify - a summary

It remains open to applicants or their representatives to respond to an examination report which has raised relative grounds by arguing against the need for some or all of the earlier right holders to be notified of their application. Applicants may also wish to avoid notifications being sent by the Registrar as the result of earlier rights identified under Section 5 by:

removing the conflict of goods/services;

• obtaining consent from the proprietor of the cited mark(s);
• dividing the application.

56.1 Removing the conflict of goods/services

This can be done by:

• (1) Positively limiting the goods/services of the application
• (2) Excluding the goods/services which are in conflict.

56.1.1 Positively limiting

Many applications are filed with very wide specifications, and/or include terms which cover a wide range of goods/services. The applicant may not actually intend to trade in/offer all the goods/service which could be covered by such wide terms and therefore may be able to be more specific about his intended activities. It may then be possible to identify whether a clash remains when more detail is available. If so, the applicant could propose a limited specification to overcome the conflict and therefore the notification requirement. Such a limitation could take the form of a shorter list of the goods/services for which protection is required, or it could consist of a more precise description of the kinds of goods/services named in the original list.

For example:

• (a) Class 7 application: Spraying machines
• (b) Class 7 earlier right: Agricultural machines and parts and fittings therefor

Limitation required of (a): "...; all for use on vehicle construction lines."

For example:

• (a) Class 9 application: Electric cables
• (b) Class 9 earlier right: Speakers and parts and fittings therefor.

Limitation required of (a):"...all for use in providing an electricity supply to properties".

A positive limitation is more likely to overcome a notification requirement where the applicant has used wide or vague terms in the original specification of the application.

56.1.2 Exclusions

When using an exclusion as a means of overcoming a notification requirement it is normally necessary for the applicant to ensure that all the goods and/or services considered to be both identical and similar to the earlier mark are excluded from the amended specification submitted in respect of the application. Previously, where the respective goods or services fell in the same class, it was acceptable to word an exclusion in the following way: "...; but not including x or any goods/services similar to x". However, as it is now established that the similarity of goods/services is a somewhat elastic concept and but one factor in the global appreciation of all the relevant factors [see the Section on similarity of goods/services for further details], in the interests of legal certainty and proper administration, it will no longer be appropriate to deal with conflicts involving similar goods/services simply by excluding the identical conflicting good/service (X) from the specification of the later application and further excluding "... any goods/services similar to X".

Instead, the application will need to be amended to explicitly exclude not only all those goods/services that are considered to be identical, but also any descriptions of goods/services that are considered to be sufficiently similar that the mark applied for would give rise to a likelihood of confusion if it were used in respect of those goods/services in order to overcome a requirement to notify the earlier right holder.

Exclusions must be added to the specification of the relevant class of the application. If an exclusion is applied to resolve a conflict which arises because the applicant’s description of goods/services (whilst relatively specific) still encompasses a product in the specification of an earlier conflicting mark, the exclusion applied to the applicant’s specification of goods/services will have to exclude not only identical goods/services, but also similar goods/services (insofar as the similarities give rise to a likelihood of confusion on the part of the public). For example:

• (a) Class 9 application: Electrical machines for use in the Office
• (b) Class 9 earlier right: Modems

Exclusion required of (a): "...but not including modems or telecommunications or computing apparatus."

Where the clash is only in respect of similar goods/services, the applicant will need to identify the conflict and submit an amended specification where those (named) similar goods/services are excluded in order to overcome the notification requirement.

• (a) Class 12 application: Cycles
• (b) Class 12 earlier right: Motor land vehicles

Exclusion required of (a): "..; but not including motor cycles."

56.2 Obtaining consent from the proprietor of the earlier mark(s).

This is specifically mentioned in the Act and covers any earlier mark raised as a notification in relation to the application under consideration. It is covered by Section 5(5) which states:

"Nothing in this section prevents the registration of a trade mark where the proprietor of the earlier trade mark or earlier right consents to the registration."

The wording of this sub-section makes it clear that the Registrar has no discretion to refuse to accept consent, even where the marks are identical and cover identical goods/services. If the proprietor of the earlier mark doesn't mind someone else using an identical mark then the Registrar will allow the later mark to proceed to publication without the requirement to notify the earlier right holder.

56.2.1 Letters of consent

The basic principles to bear in mind are that the consent must be given by the owners of the earlier mark, that the application being consented to is clearly identified and that it is clear that consent to registration (and not just use) of the mark is being given.

The minimum requirements for a letter of consent are set out below:

• (i) The consent should always include the details of the person giving the consent i.e. name, position, the name of the company (if appropriate) and the letter should be signed by the person named.
• (ii) The application in respect of which consent is being given should be identified. The application number(s) is sufficient. It is not essential to include the trade mark - nor is it necessary to identify the earlier trade marks owned by the person giving consent.
• (iii) If the specification is not referred to it will be assumed that the specification applied for is acceptable to the party giving the consent. However, if a specification is referred to, and is narrower than the one filed, the application will only be accepted without a requirement to notify the earlier right holder in respect of the goods and services in conflict to which the consent applies.
• (v) Letters of consent should be in English or, if in a foreign language, be accompanied by a certified translation.

56.2.2 Consent between Companies in the Same Ownership

The Registrar accepts the following simplified procedure in such cases, should the parties wish to pursue this option:

• (i) A general letter of consent may be provided between the two companies setting out the relationship between the two companies and confirming that they are prepared to consent to any trade mark applications made by the other party.
• (ii) On each occasion that a copy of the general letter of consent is filed, the applicant, or his agent, must supply a covering letter certifying that the general consent is still valid.

56.2.3 Payment for Consent

If there is a conflict, the actions of the proprietor of the earlier mark in requesting payment for consent is not a factor which the Registrar can take account of.

57 Honest concurrent use - examination of evidence under Section 7

Section 7 of the Act begins:

“7. - (1) This section applies where on an application for the registration of a trade mark it appears to the registrar -

• (a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or
• (b) that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied, but the applicant shows to the satisfaction of the registrar that there has been honest concurrent use of the trade mark for which registration is sought.

(2) In that case the registrar shall not refuse the application by reason of the earlier trade mark or other earlier right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade mark or other earlier right.”

However, Section 7(5) of the Act goes on to say –

“(5) This section does not apply when there is an order in force under Section 8 below”

An order has now been passed which means that Honest Concurrent Use can no longer be filed in support of an application where there is a requirement to notify the owners of earlier marks thought to be confusable with the applicant’s mark.

Applicants may wish to place on file evidence of their earlier use of the mark applied for. If so, the application will not be held up in order for them to do so. It is anticipated that any evidence is more likely to be filed in response to any opposition the applicant may face after publication.

58 Dividing the mark (TM12) as a method of overcoming a requirement to notify:

This does not, strictly speaking, overcome the requirement for the Registrar to notify the holders of the earlier mark, but where the goods/services which conflict can be pinpointed, these can be the subject of a division. This places them in a separate application to that of the remaining non-conflicting goods/services and allows the latter application to proceed without a notification requirement if the Registrar is satisfied that the restricted goods/services included in that part of the division has overcome the conflict. The part which includes the goods/services which conflict must then be dealt with by one of the other means suggested here.

59 Unacceptable methods of overcoming notification requirements

The following are NOT acceptable methods of overcoming notification requirements which are open to the applicant. Furthermore, they should not be suggested by the Registrar as he is unaware of the commercial circumstances surrounding the use (or otherwise) of the earlier mark:

• Seeking revocation of the earlier mark : TM26 (N) –non use or TM26(O)
• Other grounds
• seeking invalidation of the earlier mark: TM26 (I),
• seeking assignment of the earlier mark or assigning the application to the proprietor of the earlier mark: (TM16),
• seeking full or partial surrender of the registered earlier mark: (TM22 or TM23)

If the applicant decides to try one of these methods, any request to suspend the application pending the outcome of the action should be refused and the case allowed to proceed to publication with Notification being sent to the earlier right holder. If exceptional circumstances are made known to the examiner, such as that both parties have requested the application be suspended, the request should be referred to the Team Leader for consideration. If acceptable, the application may be suspended to allow the action to be completed within a reasonable timescale. Notification would no longer be necessary in such a case.

In practice, it is expected that such actions are more likely to be pursued in response to an opposition being filed against the later application after publication. Allowing the later mark to proceed to publication would place both parties on an equal footing.