UKIPO issues guidance on restricting trade mark specifications in ongoing registry proceedings

Parties routinely agree to apply restrictions to trade mark specifications in settlement of contentious trade mark registry proceedings. However, in UK matters, there has been an increase in the UKIPO rejecting proposed restriction wording. As a result, the UKIPO has issued guidance on how it assesses proposed restrictions in a new Tribunal Practice Note, TPN 1/2024. 

This guidance focuses on oppositions and applying limitations to trade mark applications (Form TM21B). However, it also applies to partial surrender requests of registered trade marks (Form TM23).

Parties should consider whether a restriction on the register is the most suitable resolution. Alternatively, it might actually be more appropriate for any restrictions to be recorded in a letter of undertakings or by way of co-existence agreement.

Acceptable vs unacceptable restrictions

To be accepted by the UKIPO, specification restrictions must:

• be sufficiently clear and precise;
• identify sub-categories of goods or services, not characteristics; and
• make sense in the context of the goods or services covered.

Clarity of wording:

Restrictions need to be sufficiently clear and precise so that the Registry and any third parties are able to readily identify exactly which goods or services are (or are not) covered by a particular trade mark.

If possible, multi-layer restrictions should be avoided to reduce potential confusion. For example, could a mixed negative/positive restriction "none of the aforesaid relating to [broad term A], but not including [more specific term B]", be rephrased to a single positive restriction "all of the aforesaid relating to [more specific term B]".

Sub-categories of goods/services:

A sub-category is a group or sub-group of the goods or services, whereas a characteristic is a specific quality, attribute or trait. Characteristics can be more obvious descriptors of colour or shape, or they can be when, where, why or how the goods and services are supplied and their intended purpose.

To help distinguish between sub-categories and characteristics, question whether the underlying goods or services will ultimately remain unchanged or not. A characteristic may be present or absent without changing the nature, function or purpose of the goods and services. If this is the case, the restriction will likely reference a characteristic and therefore be unacceptable.

The UKIPO provides the following illustrative examples of unacceptable wording:

• “Bags, all displaying images of cartoon characters” as the underlying goods of bags remain unchanged;
• “Clothing, all of the aforesaid being merchandise” as how the goods are marketed is not a sub-category and the underlying goods themselves remain unchanged; and
• “Tee shirts, all of the aforesaid being for use by mountain climbers” as an intended recipient is not a sub-category and, again, the underlying goods themselves remain unchanged.

Restrictions must make sense:

You cannot seek to exclude goods and services which would not otherwise be covered by the existing specification or would otherwise not be covered by the relevant Class.

Restrictions cannot contradict other terms already covered by the specification in the relevant Class.

If a restriction is for "all of the aforesaid", then you should ensure that it does indeed apply to all the preceding terms. Either the list of goods/services can be rearranged to ensure the restriction makes sense in relation to the preceding terms, or restriction wording could be applied to specific terms only.

The UKIPO provides the following illustrative examples of unacceptable wording:

• “Clothing; t-shirts; leggings; sports clothing; jeans; shorts; socks; shirts; skirts; dresses; jumpers; cardigans; hoodies; tights; stockings; footwear; trainers; none of the aforesaid being clothing for sport” as the underlined terms are contradictory;
• “Sunglasses; all of the aforesaid relating to music” as this is nonsensical; and
• "Concrete building materials, all for use in relation to a spa” as tying a restriction to a customer base in this scenario is artificial.

Procedural considerations

Filing a request to restrict the application does not negate the need to meet other deadlines in the ongoing proceedings. The UKIPO warns against the practice of applicants filing a restriction request in place of a defence (Form TM8), which is not an acceptable substitution. Until an opposition has been confirmed as withdrawn, the proceedings are still ongoing.

Parties should agree restriction wording between themselves. Both positive and negative restrictions are acceptable (e.g. all of the aforesaid…/none of the aforesaid…). The phrasing, as well as the content, of the restrictions will be dictated by what is appropriate in the context of the matter.

It is for the parties (usually the applicant) to put forward appropriate restriction wording and the UKIPO will not routinely suggest alternative (acceptable) wording.

Hearings:

Whilst the UKIPO recognises there may be some back and forth in finding acceptable wording, protracted correspondence or repeated requests may result in it recommending a hearing.

If a hearing is solely related to the restriction proposal, it will be ex parte rather than inter partes, i.e. solely between the proprietor and the hearing officer, rather than all parties. This is because it reflects the nature of the request to amend the trade mark application/registration as being a matter between the proprietor and the Registrar.

Suspensions:

Where a restriction request has been rejected by the Tribunal and the parties are seeking to resolve the matter, the UKIPO may agree to suspend proceedings for a limited period whilst this is under consideration. Suspension requests accompanied by proof of discussions between the parties are likely to be looked on more favourably.

If the hearing officer considers that further efforts to apply a restriction are unlikely to have any degree of success (perhaps given the previous conduct of the parties) or it will not materially impact the proceedings, they may refuse a suspension request.

Should you need any further advice on this, please do not hesitate to contact us.