Tribunal Practice Notice (1/2011)

Partial Refusal

This practice notice replaces PAN 14/06 & TPN 2/2006 and 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 Refusal/Cancellation

This practice notice concerns both the pre-publication examination of, the post-publication opposition to, and the post registration invalidation or revocation of trade marks. It sets out the Registrar's practice where grounds for refusal of an application exist for some of the goods/services covered by the trade mark, 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/cancellation). It applies to domestic trade mark applications and to international trade mark registrations examined or challenged under national law.

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 Giorgio Armani SpA v Sunrich Clothing Ltd [2010] EWHC 2939 (Ch)

Mann J considered the correct approach to arriving at a fair specification in opposition proceedings where there were grounds for partial refusal and where he had concluded that the application of the metaphorical "blue pencil" by the hearing officer was not appropriate and no unconditional restriction had been offered by the applicant. He considered the application of the principles applied by Mr Arnold in SENSORNET and said:

"52. [...] there is no case law binding on me which deals with the point I have to decide, and I have to decide it on the footing of the statutory provisions as to applications and amendment, such rules of procedure as govern the proceedings, and on the footing of normal requirements of procedural and substantive fairness. Mr Arnold's views do not really deal with this sort of situation [...]. So far as they indicate that the Hearing Officer has to take the specification as he or she finds it, he is not dealing with a case where there needs to be a debate in inter partes proceedings about the scope of the permitted registration. If applied too literally the concept would prevent the proper resolution of part of the real dispute.

53. What the present situation involves is the proper identification and resolution of the dispute arising out of the opposition, and the following points apply:

(i) Since this case was one of partial opposition (in terms of the goods covered), Article 13 requires that there be registration of the mark in relation to goods in relation to which the mark was not opposed. The available procedures should enable that to be done fairly and efficiently.

(ii) [...] the proper scope of registration [...] is the [potential area of dispute]. In some cases it will not be a real area of dispute because the answer is obvious - it might be possible to isolate the permissible part by blue pencilling that which is not admissible, or it might be obvious that a plain express qualification ("save for [the goods in respect of which the opposition succeeded]") will do the trick, in which case there is no real area of dispute there either. On the other hand, it might be that the answer to that part of the case is more disputed - particular formulations might be objected to as falling on one side of the line or the other. Procedures ought to allow for all these possibilities.

Mann J went on to consider the range of procedures that could be adopted in which a dispute as to residual wording could be determined, as referred to by Mr Geoffrey Hobbs, sitting as the Appointed Person in Citybond Trade Mark [2007] RPC 13. The range of procedures identified are from the applicant deciding to limit its application to some different specified wording in an unconditional amendment application to a deferment of the question of alternative wording to the stage after consideration of the formulated objection, with other possibilities in between. He concluded by stating that the hearing officer should provide a mechanism for ensuring that he/she is able to give a ruling as to what was left of the registration after a successful opposition.

3. Practice

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. Where possible this will be achieved by blue pencilling that which is not permissible, or by adding an express qualification ("save for [the unregistrable goods or services]"). In such a case the examiner will update the list of remaining goods/services for which the mark is to be published. If there is no appeal, the remainder of the application will go forward to publication. Where such deletions/exclusions are not possible, and the applicant has failed to address the objection, the trade mark will be refused for each of the applicant’s descriptions of goods/services to which the examiner’s objection applies.

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 Undefended Opposition/Invalidation/Revocation ("the proceedings")

In a case where amendment to the specification(s) of goods/services is required because the proceedings are undefended, the Examiner will, where appropriate, adopt one or combination of the following approaches:

a) Where the proceedings are directed against only some of the goods/services covered by the trade mark and the result can be easily reflected through the simple deletion of the offending descriptions of goods/services, the Examiner will take a "blue pencil" approach to remove the offending descriptions of goods/services. The application will be deemed to be abandoned in respect of the goods and/or services specified in the Form TM7 or TM26 and the remainder of the application will proceed to registration;

b) Where the extent of the opposition cannot be easily reflected through simple deletion, the Examiner can add a "save for" type exclusion to the existing descriptions of goods/services that reflects the goods/services specified in the Form TM7 or TM26 and leaves a comprehensible list of goods/services. The application will proceed to registration (or remain registered) with a "save for" type exclusion;

c) Where there is uncertainty regarding the suitability of either of the first two approaches, the Examiner will pass the case to a Hearing Officer who will indicate in his/her own words, the extent to which the proceedings succeed and invite the parties to provide submissions/proposals as to the appropriate wording for a list of goods/services that reflects his/her findings. After considering the parties' submissions, the Hearing Officer will determine a revised list of goods/services. Subject to appeal, the trade mark will be, or remain, registered for this list of goods/services.

3.2.2 Defended Proceedings

In a case where amendment to the specification(s) of goods and/or services is required as the result of the outcome of contested proceedings the Hearing Officer will, where appropriate, adopt one or combination of the following approaches:

a) Where the proceedings should only succeed in part, or where the proceedings are directed against only some of the goods/services covered by the trade mark and the result can be easily reflected through the simple deletion of the offending descriptions of goods/services, the Hearing Officer will take a "blue pencil" approach to remove the offending descriptions of goods/services. This will not require the filing of a Form TM21 on the part of the owner. If, however, any rewording of the specification is proposed by the owner in order to overcome the objection, then the decision of the Hearing Officer will take that rewording into account and the proposed wording being sanctioned by the Registrar as acceptable from a classification perspective;

b) Where the result cannot be easily reflected through simple deletion, but the Hearing Officer can clearly reflect the result by adding a "save for" type exclusion to the existing descriptions of goods/services, he or she will do so. This will not require the filing of a Form TM21 on the part of the owner. If, however, any rewording of the specification is proposed by the owner in order to overcome the objection, then the decision of the Hearing Officer will take that rewording into account subject to it being sanctioned by the Registrar as acceptable from a classification perspective;

c) If the Hearing Officer considers that the proceedings are successful against only some of the goods/services, but the result of the proceedings cannot be clearly reflected in the application through the simple deletion of particular descriptions of goods/services, or by adding a "save for" type exclusion, then the Hearing Officer will indicate the extent to which the proceedings succeed in his/her own words. The parties will then be invited to provide submissions/proposals as to the appropriate wording for a list of goods/services that reflects his/her findings and after considering the parties’ submissions, the Hearing Officer will determine a revised list of goods/services. Subject to appeal, the trade mark will be, or remain, registered for this list of goods/services.

3.4 Rule 25: publication of amendments

Amendments to the list of goods/services made by the applicant (via TM21) after publication will continue to be published and the amendment open to opposition for a period of one month as required by Rule 25. However, deletion of particular descriptions of goods/services, whether by 'blue pencilling' or through the addition of 'save for' type qualifications, will not be regarded as an amendment under s.39 and therefore will not be subject to the further one month opposition period specified in Rule 25.