The Trade Mark Regulations 2018 - Grounds for Refusal relating to only some Goods or Services

Jane Lambert

A quickie this week you will be glad to hear.  As I said in The New Trade Marks Law (12 Jan 2019, NIPC Law), changes have been made to the UK's Trade Marks Act 1994 to implement  Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (Text with EEA relevance) OJ L 336, 23.12.2015, p. 1–26.

Art 7 of the Directive contains a provision that did not appear in Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks:

"Article 7

Grounds for refusal or invalidity relating to only some of the goods or services

Where grounds for refusal of registration or for invalidity of a trade mark exist in respect of only some of the goods or services for which that trade mark has been applied or registered, refusal of registration or invalidity shall cover those goods or services only."

Art I also mentioned in The New Trade Marks Law, Directive 2015.2436 has been implemented by the Trade Marks Regulations 2018,  Reg 6 of those regulations inserts a new s.5A into the 1994 Act:

“5A Grounds for refusal relating to only some of the goods or services

Where grounds for refusal of an application for registration of a trade mark exist in respect of only some of the goods or services in respect of which the trade mark is applied for, the application is to be refused in relation to those goods and services only.”.

This new section was described as a clarification in a table on page 29 of the Intellectual Property Office's consultation on the implementation of Directive 2015/2436.  It probably makes little difference in practice in the UK.

Anyone wishing to discuss this article or trade marks, in general, may call me on 020 7404 55252 during office hours or send me a message through my contact page.