Statutory guidance

Tribunal Practice Notice (1/2020): Disclaimers/Limitations of marks

Published 21 February 2020

1. Issue

This notice outlines a change in practice in proceedings before the Registry under s.5 of the Trade Marks Act 1994.

2. Change of practice

The element(s) of a trade mark that is (are) subject to a disclaimer will be taken into account in the assessment of a likelihood of confusion with (or other damage from) a later mark, even where the disclaimed element is the only point of similarity with the later mark.

Marks with rights limited to a specified colour (or colours) may be held to be confusingly similar to later trade marks in different colour(s), if the marks are sufficiently similar overall.

3. Background

1. Previously, where an element of a trade mark was the subject of a disclaimer, and that element represented the only point of similarity with a later mark, the likelihood of confusion (or other damage) would be ruled out (see Case O/359/99 and General Cigar Co Inc v Partagas y Cia SA [2005] EWHC 1729 (Ch)).
   
   
2. This line of authority was continued by the Court of Appeal in respect of limitations of marks to colour(s): see Phones 4U Ltd v Phone4u.co.uk Intern [2007] R.P.C. 5 CA.
   
   
3. However, on 12 June 2019, the Court of Justice of the European Union (“CJEU”) handed down its judgment in Hansson C-705/17, and at paragraph 63 stated as follows:
   
   “Article 4(1)(b) of 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 must be interpreted as precluding national legislation making provision for a disclaimer whose effect would be to exclude an element of a complex trade mark, referred to in that disclaimer, from the global analysis of the relevant factors for showing the existence of a likelihood of confusion within the meaning of that provision, or to attribute to such an element, in advance and permanently, limited importance in that analysis.”
   
   
4. The UK is bound by judgments of the CJEU. The well-established Marleasing principle also requires national courts and tribunals to interpret national law, so far as possible, in line with the case law of the CJEU. It is possible to interpret s.13 (which provides for disclaimers and limitations) as not applying to s.5. Indeed, prior to the decisions mentioned in paragraphs 1 and 2 above, this was the approach taken in the UK.
   
   
5. The effect of the CJEU’s judgment is therefore that disclaimed matter can no longer be excluded from the assessment of likelihood of confusion (or other damage) in proceedings before the Registry under s.5 of the Act, even where the disclaimed matter is the only point of similarity between the marks.
   
   
6. However, elements of trade marks which are in fact descriptive and/or non-distinctive will continue to be given less weight than distinctive features in assessments made under s.5 of the Act. This is in accordance with long established case law of the CJEU, Court of Appeal and Supreme Court. Therefore, even though disclaimers no longer automatically exclude the likelihood of confusion etc. with later marks on the basis of the same or similar (disclaimed) element(s), this will often make no difference to the overall outcome of assessments made under s.5 of the Act.
   
   
7. Although the judgment in Hansson did not directly address limitations of rights in marks entered at the time of registration, these are no more than disclaimers of rights expressed positively. Therefore, the approach adopted by the CJEU must, as a matter of logic, extend to limitations of rights in the mark, i.e. such limitations should not be taken to automatically exclude the possibility of a likelihood of confusion with (or other damage from) a later similar mark.
   
   
8. Geographical limitations of rights do not go to the mark itself, but rather the scope of geographical protection conferred by the registration. This was not dealt with in the Hansson judgment. Consequently, there is no change in the practice relating to geographical limitations of rights. These will continue to be given weight on their own account in assessments made under s.5 of the Act.

4. Enquiries

Any enquiries about this notice should be addressed to:

Stephanie Wilson
Hearing Officer