Practice Amendment Notice

PAN 14/06 & TPN 2/2006 - Issued 28 July 2006

This notice has been replaced by TPN 1/2011 which takes into account the latest guidance from the courts in respect of the issue of partial refusals, and in particular, the guidance of Mann J in Giorgio Armani SpA v Sunrich Clothing Ltd [2010] EWHC 2939 (Ch).

1. Partial Refusals

This practice notice concerns both the pre-publication examination of and the post-publication opposition to trade mark applications. It sets out the Registrar's practice where grounds for refusal of an application exist for some of the goods/services in the application, but not others. This practice amendment comes into effect immediately and affects all applications for registration (i.e. those currently examined and those under opposition). It applies to domestic trade mark applications (partial refusal of international trade mark registrations is covered by the Common Regulations pertaining to international registrations).

2. The Law

2.1 Article 13 of the First Council Directive 89/104 and UK legal analysis

Article 13 of the First Council Directive 89/104 of December 21, 1988, to approximate the laws of the Member States relating to trade marks, states:

"Where grounds for refusal of registration or for revocation or invalidity of a trade mark exist in respect of only some of the goods or services for which that trade mark has been applied for or registered, refusal of registration or revocation or invalidity shall cover those goods or services only."

2.2 SENSORNET Trade Mark Application

In Sensornet Trade Mark [Case O/136/06], Mr Richard Arnold Q.C., sitting as the Appointed Person stated that:

"50. …if an objection to registrability only applies to some goods or services in the specification applied for, then the application should only be refused in so far as it covers those goods or services and should be allowed to proceed in respect of the remainder. I consider that this is equally true during examination and during opposition.

52. Suppose, for example, that an applicant applies to register a mark in respect of "motor cars; motor cycles; bicycles" and that, for whatever reason, the Registrar concludes that the requirements for registration are met so far as the application relates to "motor cars; motor cycles" but that they are not met so far as the application relates to "bicycles". In those circumstances I consider that the Registrar can and should decide to refuse the application so far as it relates to "bicycles" but accept it so far as it relates to "motor cars; motor cycles".

53. Furthermore, I do not consider that in such circumstances it is necessary for the applicant to amend the specification under section 39 in order for the acceptable part to be accepted and published for opposition. All that is needed is to identify which part of the specification is acceptable and which is not, and the Registrar's decision can and should do this. To my mind, section 39 has a different function, which is to enable applicants to make voluntary restrictions to specifications, whether in the hope of side-stepping a ground of objection or for other reasons… I consider that it is possible that section 39 enables applicants to make amendments to the wording of the specification and that this is not a power which the Registrar has.

57. Thus if the hypothetical case considered in paragraph 52 arose in opposition proceedings, I consider that the result should be the same. The hearing officer could and should decide to refuse the application so far as it related to "bicycles" but accept it so far as it related to "motor cars; motor cycles". Again it would be unnecessary for the applicant to request amendment of the specification under section 39.

59. It will be seen that the situations discussed above all involve taking the specification as it stands and, in the event that it is decided that grounds for refusal exist in respect of certain of the goods or services specified but not others, deleting the objectionable goods or services from the specification i.e. applying a blue pencil approach."

2.3 BVBA Management, Training en Consultancy v Benelux-Merkenbureau, Opinion of Advocate General, European Court of Justice, C-239/05

This Practice Notice is consistent with the Advocate General's Opinion in the above case and is issued pending eventual Judgment by the European Court of Justice. Any amendments to the practice which are necessary as a result of the Judgment will be made, as appropriate.

3. Practice

In practical terms, this means that the registrar will partially refuse the application for the goods/services for which it is objectionable, irrespective of whether the final decision follows examination, ex parte hearing, undefended opposition, preliminary indication or final inter partes decision.

The registrar will not, however, perform any rewording of specifications. This is because section 39 of the Act does not give the Registrar that power. The onus to amend the wording of a specification (beyond simple deletion) lies with the applicant (section 39). "Rewording" includes specifying terms within a broad term coupled with deleting the broad term, or by retaining the broad term and adding positive and negative qualifications so as to restrict its scope.

Therefore, any proposals to reword specifications must be put forward by the applicant. It is important that any proposals the applicant may have to amend the specification of goods/services are made available to the Examiner or Hearing Officer, and not made for the first time at the appeal hearing. The Registrar endeavours to simplify and improve the speed of trade mark dispute proceedings and he is assisted in this aim by parties bringing all their arguments and amendment proposals to the table when the scope of the substantive grounds for refusal is being considered by his Examiners, ex parte Hearing Officers and inter partes Principal Hearing Officers. Requesting such amendments for the first time at the appeal stage may have costs implications.

3.1 Examination

Where the Examiner takes the view that the mark is registrable for some of the goods/services in the application, but not for others, he or she will always identify the classes in which the objection exists and provide an indication of the goods/services in each class which are being objected to.

Applicants will be given the opportunity to delete the offending goods/services, or otherwise amend the application to overcome the objection, or to argue against the correctness of the objection. If no response is received by the due date, the application will be refused in respect of the offending goods/services.

If there is no appeal, the remainder of the application will go forward to publication. If an appeal is made against the rejection of the mark for the refused goods/services, the whole application will be suspended, with no part of it being published, until the matter is finally determined. However, the applicant may file a Form TM12 and the application will be divided, whether or not a request for a written statement of grounds has been made (Form TM5) or an appeal subsequently made to the Appointed Person (Form TM55). The undisputed part of the application will then proceed to publication, whilst the remainder will be suspended until finally determined.

3.2 Opposition

3.2.1 Rule 13A(1): no TM8

In the case of an undefended opposition where only some of the goods and/or services have been opposed, the Examiner will notify both parties that the application will be deemed to be withdrawn in respect of the goods and/or services which were specified as opposed on Form TM7 and the remainder of the application will proceed to registration.

3.2.2 Rule 13B(4)(c): preliminary indication of total success for the opponent and no Form TM53

This rule governs an indication of total success under sections 5(1) or 5(2) for the opponent. For the case to proceed to the evidential rounds, a Form TM53 must be filed by the applicant. If no Form TM53 is filed and the Form TM7 only specifies some of the goods/services as being opposed, the Examiner will deem those items to be withdrawn and the remainder of the application will proceed to registration (subject to the rewording caveat outlined in paragraph 3, above)

3.2.3 Rule 13B(4)(b): preliminary indication of partial success and no Form TM53

This rule governs an indication of partial success under sections 5(1) or 5(2). For the case to proceed to the evidential rounds, a Form TM53 must be filed by either the opponent or the applicant. If no Form TM53 is filed by either party, how much, if any, of the application will proceed to registration will depend upon how much of the specification(s) was originally opposed on the Form TM7 and how much of the contested specification was liable to be refused according to the preliminary indication.

The application will proceed to registration to the extent that straightforward deletion of goods/services overcomes the objection (as per paragraph 57 of SENSORNET). If a combination of partial attack and partial success exists, those goods which can be deleted simply should be removed and the application allowed to proceed to registration.

3.3 Main hearings and appeals

If the Hearing Officer or the Appointed Person considers that mere deletion can be performed, this will not require the filing of a Form TM21 on the part of the applicant. If, however, any rewording of the specification is unconditionally proposed by the applicant in order to overcome the objection, then the decision of the Hearing Officer or Appointed Person will be subject to that rewording being applied for by the applicant on a Form TM21 and being sanctioned by the Registrar as acceptable from a classification perspective.

3.4 Rule 18: publication of amendments

Any rewording of a specification (via TM21) will continue to be published and open to a period of one month for any opposition to the amendment under section 39. However, straightforward deletion of specification items will not be regarded as an amendment and therefore will not be subject to the further one month opposition period specified in Rule 18. All voluntary restrictions made by the applicant after publication will continue to be published.

Raoul Colombo
Head of Law Section
Trade Marks Registry
Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Phone +44(0)1633 811407
Fax +44(0)1633 811175