If you are a business owner dealing with a trade mark dispute and being challenged by another party in tribunal proceedings, then it is sometimes important to know how to manage the scope of your trade mark registration or application in so far as the goods and/or services it covers because successfully doing so can often lead to settlement and moving past the dispute.

This practice notice from the UK Intellectual Property Office (UKIPO) offers guidance on how to handle such situations effectively.

Note that the following discusses amending a specification for a trade mark application not yet registered, in which case Form TM21B applies. If your mark has registered then Form TM23 would apply, but the general principles of what is acceptable as an amendment remain the same.

1. What is the Notice About?

The new Tribunal Practice Notice 1/2024 was published by the UKIPO on 17th July 2024 and provides guidance on how the UKIPO deals with trade mark specifications (that is, the list of goods and/or services for which a trade mark is registered or applied for) when the trade mark is the subject of a dispute.

This is crucial step of knowledge because the scope of your trade mark right will not only influence the outcome of the dispute, but also set in stone for the future what that right does and does not cover.

2. Why Does This Matter?

When you file a trade mark application you must specify the goods and/or services it covers. However, if a legal dispute arises, you might need to review and possibly restrict this specification in order to placate a challenging party and resolve the dispute. This can affect how broadly or narrowly your trade mark right is protected, which can then have a direct impact upon your business’s branding and legal rights.

3. Why Has This New Practice Notice Come About?

Over time, the UKIPO has dealt with two main issues that have resulted in limitation requests being rejected. This wastes time (and possibly) money for the limitation applicant because they are then required to reconsider their request and resubmit the limitation using a new official Form TM21B.

The two key issues have been:

• Inappropriate limitations: There has been a noticeable increase in the use of the Form TM21B during trade mark opposition proceedings where the limitations proposed are deemed unacceptable by the UKIPO
• Misuse of the form: Some applicants have mistakenly used the Form TM21B to add geographic limitations or disclaimers, which is not the intended purpose of the form.

4. Mistakes To Avoid

The Notice outlines the Tribunal’s key considerations when evaluating proposed restrictions to trade mark specifications and offers several useful examples.

Here’s what the Tribunal look for:

• Clarity and precision: The restrictions must clearly and precisely define what is included and excluded from the specification.
• Sub-categories not characteristics: The specification should identify specific sub-categories of goods or services, rather than describing their characteristics.
• Consistency: The proposed restrictions must literally make sense and be consistent within the context of the overall specification.

In addition to these considerations, the Notice includes several key points:

• Relation to preceding terms: All proposed restrictions should logically relate to all the terms listed earlier in the specification. For example, when you add the limitation “all the aforesaid goods being in relation to motor bikes” then you must keep in mind that every term that precedes your new limitation will be reduced in scope, such that the terms will not extend beyond anything other than in relation to motor bikes.
• No alternative wording: The UKIPO will not usually suggest alternative wording for restrictions. It is up to you to come up with something acceptable.
• No reference for restriction type: The UKIPO does not favour either positive or negative restrictions. A positive limitation is “all the aforesaid goods being in relation to motor bikes“; a negative limitation is “none of the aforesaid goods being in relation to motor bikes“. Either will work, but the latter leaves you with a wider breadth of specification than the former.
• Artificial limitation concerns: Limiting broadly applicable terms by reference to their use a specific setting (e.g., all relating to spas) may be seen as ‘artificial’ and likely to be problematic because in practice some products or services may not be capable of being used in this way.
• Form usage: Applicants should not assume that a limitation submission through Form TM21B will also take care of their defence and counterstatement obligation in opposition proceedings. It won’t.

5. Impact of Restricting Specifications

Limiting the scope of your trade mark right can have several implications:

• Brand Protection: A narrower specification may reduce the scope of protection and could then open the door for competitors to register similar marks for goods or services closer to your own.
• Market Position: The limitation could affect your brand’s market position if it no longer covers certain products or services you offer or plan to offer.
• Legal Strategy: Consider the strategic impact of restricting your trade mark right. When filing a trade mark application at the outset it might be beneficial to focus on a narrower, more precise range of goods and services that better align with your core business activities. The wider you file, the wider you cast your net and the greater the chances you will put yourself in the crosshairs of potential challengers. On the other hand, when in a legal dispute, if by limiting your specification it does the job of resolving a dispute, make sure that the resolution of the dispute outweighs any price you pay in reducing the scope of your protection.

6. Final Thoughts

Filing trade mark applications may seem easy, but often a lot of thinking needs to go into them and you need to be strategical if you want them to go smoothly and your business to go unchallenged as a result. Navigating trade mark disputes can often be complex too.

By carefully reviewing and adjusting your trade mark protection, seeking professional advice and preparing for possible changes, you can better manage the challenges posed by Tribunal proceedings and maintain robust protection for your brand.