UK IPO practice change on partial trade mark refusals

Following the recent UK court case Giorgio Armani SpA v Sunrich Clothing Ltd [2010], the UK Intellectual Property office has issed a Tribunal Practice Notice (1/2011). This updates the practice in relation to UK or International trade marks designating the UK where there is a parital refusal, in other words for some of the specified goods or services. 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: delete those goods/services (same as OHIM's approach); b) if is it not so clear: add the limitation "save for..."; c) if even the limitiation "save for..." would not be sufficiently clear: invite the parties to provide submissions/proposals for the appropriate wording, after which the UK IPO will decide on the appropriate wording. This practice change will prevent trade marks from being refused in their entirety when only some of the goods/services are objected to or opposed. It is a useful step towards further harmonising trade mark practice across EC member states and providing trade mark proprietors with more certainty.

04/20/2011 | Trade Mark