UK IPO update to trademark specification amendment

The UK IPO’s concern here is that specification restrictions are not always clear and precise and, in some cases, may not be relevant to the specification being restricted.

 

Accordingly, the TPN sets out that restrictions must:

 

1. be clear and precise
2. not identify a characteristic of goods/services
3. make sense within the context of the specification

 

The TPN gives a number of examples of what not to do, but (ironically) is not that clear on what may be acceptable.

It would appear that the popular “none of the aforesaid goods/services being related to …” is no longer considered clear or precise. Instead, the focus appears to be more on what is intended to be protected by the trade mark specification, rather than what is excluded.

 

The TPN also notes that a specification restriction may not always be relevant and that alternative ways of settlement should be considered, such as a co-existence agreement. Whilst this should be considered, it is not always the outcome that the parties want or need. In many cases, a simple specification restriction has been sufficient to settle matters. This may well become harder to achieve.

 

Should a refusal notice be issued, the TPN confirms that a further response may be necessary. Should the discussions with the UK IPO be too lengthy, an ex parte hearing may be convened. The TPN also confirms that proceedings may be suspended pending the outcome of the specification restriction.

 

Given the new complexities surrounding specification restrictions, we recommend seeking professional advice in order to reduce the risk of refusal by the UK IPO.