Specification drafting

Question 1

What does s32(3) of the TMA require for a trade mark application?

Answer 1

Requires either
a) a statement that the applicant is using the mark, or the mark is used with their consent, for the goods/services for; or

b) that they have a bona fide intention to use the mark for those goods/services.

Question 2

What does the Postkantor case say about certainty in trade mark specifications?

Answer 2

Postkantor (C-363/99): ‘the scope of registered rights must be determined with legal certainty’

Question 3

What does the YouView TV Ltd v Total Ltd case say about the interpretation of trade mark specifications?

Answer 3

• Avoid overly liberal interpretations of registrations.
• Equally, no justification to containing a specification to an unnaturally narrow interpretation.

Question 4

What aspect of bad faith did the Monopoly case (EU case) deal with?

Answer 4

Filing new applications for the same or very similar mark in order to circumvent the 5-year proof of use period.

By doing so, it abuses/circumvents the the obligation to prove use and distorts the (EU) trade mark system.

Question 5

Is refiling a trade mark always going to constitute bad faith?

Answer 5

No - it should be coupled with other evidence, but it generally requires some evidence of an intention to circumvent to system (Monopoly).

Refiling the same mark for different goods and services will usually be fine provided they are using or have an intention to use the mark for these new goods/services.

Question 6

Following Pan 1/25 and SkyKick, in what circumstances might an examiner raise an objection to an application based on bad faith?

Answer 6

• Incredibly broad specifications.
• As an extreme example, an application covering every class heading in every class.
• Filing applications which cover broad terms such as “pharmaceuticals” or “clothing”. However, it is unlikely that will raised objections solely on this basis, but will consider it in the context of the entire list of goods/services.

Question 7

Following Pan 1/25 and SkyKick, what should applicant’s of broad specifications bear in mind to reduce their application being refused for bad faith?

Answer 7

• Commercial rationale - whilst it is not necessary that they are going to use their mark for every conceivable good/service, they should be able to give a satisfactory commercial rationale for why they have filed so broadly.

Question 8

At what point is the bad faith of the applicant assessed?

Answer 8

At the filing date.

Question 9

In the decision of UKTM United Faith Workers’ Fellowship, why was the application refused in its entirety?

Answer 9

The hearing officer concluded that there was a disconnect between all of the services applied for and the intention of the applicant, so bad faith was found in relation to the entire application.

Question 10

What commercial considerations should you have in mind when advising a client on filing, bearing in mind bad faith and other objections?

Answer 10

1) Have a good understanding of what your client does and intends to do in the next five years.

2) Remind them that the specification cannot be widened after filing.

3) Ensure that the term is understandable (avoid vague terms)

4) Where possible, include a mix of general terms and more specific terms.

Question 11

What impact might the awareness of earlier rights have on drafting a specification?

Answer 11

• You may want to narrow the list of goods/services or avoid broad terms which would be considered identical to a narrower term covered by an earlier registration.
• You could also include a limitation or an exclusion to reduce the overlap with an earlier right, though in practice this is often done after an opposition.

Question 12

When filing an arguably descriptive mark, how might you mitigate the risk of an objection based on descriptiveness or non-distinctiveness?

Answer 12

Try to “hide” the goods within a broader term so that the broader term covers it but the application does not refer to the specific goods for which the mark is descriptive/non-distinctive of.

Question 13

What was the effect of PAN 1/15 for services?

What examples does PAN 1/15 give for newly acceptable services?

Answer 13

• It essentially confirmed the decision in Netto Marken.
• In Netto Marken, the CJEu confirmed that “the bringing together” of services other than retail services are in principle registrable services.
• The following are example specifications which will now be deemed acceptable:

The bringing together, for the benefit of others, of a variety of legal services, enabling customers to conveniently view and purchase those services.

The bringing together, for the benefit of others, of slimming club services, video-on- demand services, and detective agency services, enabling customers to conveniently view and purchase those services.

The bringing together, for the benefit of others, of a variety of broadcasting services, enabling customers to conveniently view and purchase those services.