Restricting specifications of applications and registrations – an update from the UK IPO

The UK Intellectual Property Office (UK IPO) has recently issued TPN 1/2024 ‘Restricting specifications of applications and registrations subject to Tribunal proceedings’.

The UK IPO issued the TPN against the backdrop of two issues it has seen with the form TM21B which allows applicants to request to limit the specifications of their application:

1. An increase in the form TM21B filed during trade mark opposition proceedings that it deems to have unacceptable limitations.
2. The mistaken attempt to use form TM21B to record geographic limitations or disclaimers to marks.

The TPN summarises the Tribunal’s key considerations when assessing whether or not to accept proposed specification restrictions and it contains a few helpful examples. These include stipulations that the restrictions must:

1. Be clear and precise in identifying what is and what is not covered by the specification.
2. Identify sub-categories of goods / services and not their characteristics.
3. Make sense and not be contradictory within the context of the specification.

In the TPN, the Registry also includes a few other points to note, including that:

• “all of the aforesaid” restrictions should, in fact, relate to all of the preceding terms;
• it will not routinely provide or suggest alternative wording for restrictions;
• it does not have a preference for either positive or negative restrictions;
• it considers limiting of widely applicable terms by reference to their use in a particular setting such as use in relation to a spa) is likely to be ‘artificial’; and
• applicants ought not file a form TM21B in lieu of their defence and counter statement.

Our thoughts

While there is nothing novel about the TPN, it is a helpful aide memoir of the UK IPO’s requirements for specifications and also its reluctance to assist parties negotiating and crafting Registry-approved limitations.