The IPO released a practice note in summer 2024 to address the increase in trade mark applicants submitting unacceptable restrictions to specifications of goods/services for trade marks that are under opposition.

Trade mark applicants facing an opposition often seek to settle matters with the opponent by proposing a restriction to the scope of the goods/services in their application. This can be a way to successfully resolve a dispute.

However, Tribunal Practice Notice 1/2024 (“TPN1/2024” / “Notice”) now seeks to avoid ambiguous restrictions and the delays these can cause to proceedings. The Notice provides guidance to help restrictions be readily understood both by the Tribunal Section and third parties. The Notice will also be applied by trade mark examiners and Hearing Officers considering restrictions submitted prior to publication of a trade mark application, and if a registration is to be partially surrendered.

TPN1/2024 sets out the primary considerations of the Tribunal Section, with some non-exhaustive examples of what may and may not be acceptable.

The key points arising from the Notice are:

• Restrictions should be clear and precise to anyone checking the Register. Multiple layers in the wording and combinations of positive and negative restrictions could lead to ambiguity.
• Restrictions can either be positive or negative in nature. The IPO has no preference, and it is for the parties concerned to decide which would be more appropriate.
• It is for the applicant to propose appropriate wording. The Registrar will not usually suggest alternative wording if the proposal is unsuitable.
• A restriction should not be geographic in nature or seek to disclaim an element of the mark.
• Restrictions should identify sub-categories of goods/services and not characteristics. (e.g. ‘bags all displaying images of cartoon characters.’ iIs unacceptable).
• Limiting to an intended recipient (e.g. t-shirts for use by mountain climbers’) would not be acceptable for goods, but may work for services targeted at a specific sector.
• Limitations referring to use in a particular setting or by a specific customer base, are likely to be unacceptable.
• Restrictions must make sense. If they contradict any preceding goods/services or exclude goods/services that would not be within the class in issue, they would not be acceptable.

If the first restriction is not acceptable, the applicant will get an opportunity to submit revised wording. Further brief written exchanges with the IPO may be required.

Also, if the parties in an opposition are negotiating alternative wording, proceedings may be suspended for a short time. If the restriction wording is repeatedly rejected, a hearing may then be required, which would be ex parte – for the applicant only.

UK trade mark applicants should carefully consider any restriction wording in their goods/services to follow this notice.

Parties resolving a dispute should also ensure terms included in any negotiated settlement are compliant with this Notice.