Amendment by way of a limitation or exclusion of goods is an effective way of distinguishing your trade mark application from a prior application or registration of another party for the purposes of overcoming a citation (in jurisdictions where prior rights are raised as objections during examination) or avoiding/settling an opposition.
However, a UK applicant needs to take care to ensure that the wording of the limitation/ exclusion will be acceptable by the examiner following Postkantoor. In the Postkantoor judgment, the CJEU held that it is acceptable to exclude a particular category of goods, but it is not acceptable to exclude a particular characteristic of the goods. Positive limitations are acceptable where they limit as to the function of the goods.
Understanding Limitations and Exclusion Clauses
Exclusion clauses and the scope of a limited specification were the main issues in a High Court appeal by the Swiss company, Omega S.A. ("Swiss") against a decision of the UK Trade Marks Registry dismissing their opposition to UK Trade Mark Application No. 1571303 OMEGA & Device filed by the American company, Omega Engineering Incorporated ("Engineering"). The appeal also considered an application for summary judgment by Engineering on a claim for breach of contract.
Engineering had amended their specification in an attempt to overcome the opposition by Swiss. The amended goods were:
"Period timers intended for a scientific or industrial application in measuring, signalling, checking, displaying or recording heat or temperature (including such having provision to record heat or temperature over a period of time and/or to display the time of day)".
Engineering contended that the goods following amendment were goods which Swiss were precluded from opposing under the terms of an agreement between the parties. Under the terms of the 1984 dated Agreement, Swiss were prevented from using and applying to register any OMEGA trade mark or opposing /objecting to the use by Engineering of any OMEGA trade mark for the following goods:
"Instruments and apparatus intended for a scientific or industrial application in measuring, signalling, checking, displaying or recording heat or temperature (including such having provision to record heat or temperature over a period of time and/or to display the time of day)".
Swiss contended that the term "period timers" meant something that measured time and time alone. Engineering argued that there was nothing in the expression "period timer" to exclude a device which performed another function, for example, a device known as a period timer may also display temperature. In the appeal, the Judge agreed with Engineering and held that period timers may have more than one function.
Class 9 Exclusion Clause Extends to Class 14
In Engineering’s claim for breach of contract and application for summary judgment, they claimed that Swiss was in breach of the 1984 Agreement by applying to register various trade marks, including a CTM application for OMEGA & Device covering goods in Classes 9 and 14. They claimed that Swiss had acted in breach of the 1984 Agreement because the specification of goods overlapped with the "excluded goods". The Class 14 specification included "horological instruments"
As with "period timers", Swiss contended that horological goods measure time and time alone. The judge again rejected this argument on the basis that the goods could be multi-functional.
Positive Limitation as to Function Distinguishes Goods
Swiss were not completely defeated. Their International Trade Mark Registration 997036 in Class 9 for which the goods were qualified by the words "all the aforesaid goods intended for the field of sports" was held not to overlap with "the excluded goods" and this limitation as to the function of the goods was acceptable in line with Postkantoor.
Excluded Goods Clause Does Not Extend to Related Services
In relation to further International applications by Swiss for services in Classes 37 and 42, Engineering contended that the services were in respect of "the excluded goods". The Judge rejected this claim. Swiss were not precluded from registering their marks in relation to services under the terms of the 1984 Agreement. The Agreement should have explicitly stated a restriction in relation to services if this was intended.
This case reinforces Postkantoor and the UK Registry practice arising from that case when it comes to what is an acceptable limitation/ 4 Jenkins Trade Mark Newsletter UK COURT DIARY exclusion clause. Whilst an exclusion of a particular category of goods, for example "vehicles, but not including motor land vehicles" is acceptable, an exclusion of a particular characteristic of goods, for example "tables, not of imitation wood" is not acceptable.
A limitation as to function is acceptable, so "timers for measuring time" ought to be acceptable. However, the scope of protection afforded to the proprietor of a registration for these goods may in fact be much wider than a literal interpretation of "timers for measuring time" in view of the Omega decision and the finding that "period timers" may be multi-functional devices. We would expect an opposition against an application for "temperature controllers also having a timer function" to succeed on the basis of a prior right for the identical mark covering "timers for measuring time". Do the words "for measuring time" really limit the goods "timers" to being only for measuring time? If this were what was intended, it would be advisable, for the avoidance of any doubt, to state "timers solely for measuring time".
This decision creates some ambiguity for both applicants and opponents. Applicants should be as clear and as precise as possible in limiting their specifications to overcome citations/oppositions. Opponents need to be creative when submitting their arguments on similarity of goods. Goods that at first glance may not appear similar could be found similar if it is successfully argued that they consist of multi-functional devices and on this basis the goods have the same function. When it comes to the interpretation by a Court of exclusion clauses in agreements, this case shows that terms may be interpreted in their broadest sense, and so again it pays to be clear and precise when drafting such clauses, so that, if it is not intended for a term to be interpreted in the broadest sense, taking into account various possible functions a device of the kind described may perform, then this should be made clear in the definition of the product in the exclusion clause.
It is also wise when drafting an exclusion clause for an agreement to specify the class to which the exclusion relates, otherwise the excluded goods may be deemed to encompass goods falling in other classes. If it is intended for the exclusion clause to encompass services in addition to the stated goods, this should be explicitly stated in the agreement.