NEW UK OFFICE PRACTICE ON LIMITATIONS OF TRADE MARK RIGHTS

The UK Patent Office has issued a new Practice Amendment Notice, PAN 6/04 on territorial and other limitations. The background is this: the purpose of a trade mark's specification is to provide a statement of the goods or services for which it is registered. The Trade Marks Act 1994 provides for specified territorial or other limitations; geographical limitations have in the past been incorrectly included in lists of goods and services, rather than expressly identified as limitations. Therefore, in instances where geographical limitations appear in the statement of goods or services, applicants will be required to delete them and insert them in Box 11 of form TM3.
 
The Notice gives examples of limitations improperly listed in the statement of goods or services:

• Pharmaceutical preparations and substances, none being for export, other than to the Republic of Ireland;
• Cosmetics and soaps, all for sale in Northern Ireland and Scotland;
• Manufactured tobacco, for export from the United Kingdom to Zambia, the Republic of South Africa and Tanzania;
• Nightclub services provided in London.

Such limitations should not be included in the statement of goods or services: they go instead in Box 11 of the form TM3. Other types of limitation should still be listed in the statement of goods or services, for example:

• Fertilizers for use in the care of house plants;
• Pharmaceutical substances for use in treatment of cardiovascular diseases;
• Gardening magazines;
• Alcoholic beverages, but in so far as whisky and whisky based liqueurs are concerned only Scotch whisky and Scotch whisky based liqueurs produced in Scotland;
• Transportation of goods by rail;
• Pharmaceutical preparations for supply only on prescription of a registered medical practitioner;
• Lubricants, for sale in containers of not less than 20 litres;
• Milk and cheese, the produce of Northern Ireland;
• Cleaning preparations; preparations for the hair; but not including soaps;
• Financial services, but not including banking;
• Building materials (not of metal).

This revised practice comes into force on 26 July 2004.

The IPKat, who has a tidy mind, approves the new arrangements and agrees that only those limitations that describe the inherent nature of the goods or services themselves should qualify the extent of protection accorded by the mark's registration.

More on limitations here and here