Following the recent High Court case Giorgio Armani SpA v Sunrich Clothing Ltd [2010], the UK Intellectual Property Office (UK IPO) has issued Tribunal Practice Notice No. 1/2011 to clarify the scope of trade mark refusals.
Summary of the notice
The notice updates the practice in relation to UK or International trade marks designating the UK where there is a partial refusal, in other words a refusal for some of the goods or services covered by the trade mark application or registration. Such a refusal could be the result of an objection by the Examiner during the prosecution stage, or as a result of a successful (or partially successful) opposition, invalidation or revocation action.
In summary, where there is a partial refusal the UK IPO will now:
a) if it is easy to separate the refused goods/services from the remaining ones: simply delete those goods/services (so-called “blue-pencilling”); or
b) if such a deletion would not be clear: add the limitation “save for…”; or
c) if even the limitation “save for…” would not be sufficiently clear: invite the parties to provide submissions and/or proposals for the appropriate wording, after which the UK IPO will decide on the appropriate wording.
History of the case
The case arose from an opposition where the UK IPO Hearing Officer refused a trade mark application for an entire group of goods despite the opposition only being directed towards some specific goods falling within that group. At no point were the parties consulted by the Hearing Officer as to suggestions for alternative appropriate wording of the list of goods.
Upon appeal to the High Court of England and Wales, Justice Mann reviewed guidance given in Sensornet Trade Mark [Case O/136/06] and Citybond Trade Mark [2007] in seeking to find a solution to the situation where there were grounds for partial refusal but where the “blue pencil” approach would not be suitable and no unconditional restriction had been offered by the applicant. Due account was also taken of 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, which states that:
“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.”
Justice Mann concluded that the Hearing Officer should provide a mechanism for ensuring that he is able to give a fair ruling as to the list of goods/services that remain in a trade mark registration after an opposition. Consequently, the Hearing Officer’s decision was overturned, the parties were invited to provide submissions and proposals for alterative wording of the remaining goods, and a court order was made accordingly for re-wording of the list of goods. Subsequently, the above-mentioned procedure notice was issued.
Consequences
This Tribunal practice amendment is a welcome change to the UK trade mark system and will prevent trade marks from being refused in their entirety when only some of the goods/services are objected to or opposed. It is also a useful step towards further harmonising trade mark practice across EC member states. Above all, it provides trade mark proprietors with more certainty regarding the scope of their trade mark applications and registrations.
