Ensure limitations are clear and precise

Limitations that involve multiple layers of restrictions are likely to be deemed unclear. Similarly, the use of vague language may be considered imprecise.

Focus on sub-categories, not characteristics

Limitations should clearly define sub-categories of goods and services, rather than their qualities, traits, or marketing methods, as these will be viewed as characteristics.

Maintain consistency within the specification

Limitations must be logical and consistent with the existing terms of the specification. Any contradictions may lead to refusal.

Additional guidance

Timely responses are crucial: submitting a limitation request is not the same as filing a defence. If you are facing a statutory deadline ensure it is met while proceedings are still ongoing.

Rejected limitations: if your limitation request is rejected do not expect the UKIPO to provide alternative wording.

Suspensions of proceedings: if you need time to develop new wording the UKIPO may agree to suspend contentious proceedings for a limited period. Suspension requests that include evidence of efforts to resolve the objection are more favourably considered.

Comment

While the Tribunal Practice Notice does not introduce novel concepts, it is a timely reminder that limitation requests should be sensible and logical. The UKIPO will likely now be scrutinising limitation requests more rigorously in line with this guidance, with general limitations placed at the end of specifications, for example, now being closely examined against each term. And if you’re not working with the other side in seeking a workable resolution? Don’t count on the UKIPO to hit the pause button. It is likely to be less generous with suspensions if collaboration is lacking.

Useful link

UKIPO Tribunal Practice Notice 1/2024 of 17 July 2024: dycip.com/tpn-1-2024-jul24