Winter is coming - Face masks, face coverings and bullet-proof waistcoats...

A case commentary on the UK IPO decision in OPTIPRO and related regulatory advice on face masks

As we head into the winter flu season many of us will be reflecting on last years lockdown and ensuring our Covid and flu jabs are up to date. Whilst face masks, in all their guises, used to be for just doctors, dentists and builders, as the sniffling on the train and tube increases there’s an increasing number returning to the ‘comfort’ of the face mask. As a frequenter of the Waterloo & City line, where we’re often packed like sardines, I have to say I’m half minded to join them (don't you love living in London?).

So, do you know the difference between a face mask and a face covering – and do they have different effects? And what is the regulation around them?

Regulation

The UK guidance on face masks was last updated in April 2021 and differs depending on what type of face mask or covering we are talking about[1]. The table below shows in summary the regulation for each type of face mask.

(although note there are some exceptions):

Face coverings, which will be the mask many of us will be familiar with, are not strictly regulated but do have guidance surrounding them. The guidance[2] provides that the product must be ‘safe’. A ‘safe’ product has a number of characteristics, as defined in the Regulation (GPSR 2005), but the most important from a consumer protection perspective is that the face covering doesn’t claim to be PPE or a medical device (i.e. a higher grade of mask which might offer additional protection to a mere face covering). The British Standards Institution has produced ‘Flex 555’ as a ‘best practice’ guide for ensuring safety of face coverings: Community face coverings | BSI (bsigroup.com), but a lot of the guidance around production of face coverings appears to be common sense, rather than anything that leads to additional protection for the consumer. For example, ‘face covering must not contain any sharp points or rough edges that will pieces or cut the skin’. Well, that’s good then.

So where does that lead us? It leads us back to trade marks and brand protection – and what the strength of brand means to both your average Joe and the specialist, like a doctor. The decision also shows the hard and expensive job of the protective equipment industry in having to police so many complementary classes.

And so to the case at hand (or face)

In January 2021, Optimum Medical Solutions Limited (‘OMS Ltd’) applied to register the trade marks OPTIPRE and OPTIPRO for a number of goods in classes 5 and 10, including medical wipes and face shields for medical use.

The well-known JBS Group, James Boylan Safety Limited (‘JBS Ltd’) opposed OPTIPRE and OPTIPRO before the UK Intellectual Property Office (“UK IPO”) based on its earlier registered trade mark for OPTIPRO covering a number of goods in classes 9 and 25, including ‘protective masks’ in class 9. You won’t be surprised to learn that OPTIPRO and OPTIPRO were deemed identical marks. Nor that OPTIPRO and OPTIPRE were found to be similar marks.

However, it’s the comparison of classes here alongside the regulation we’ve outlined above that really gets to the crux of why brand can be so important for consumer protection and why specification is more than just a class.

I know many of you will only have been reading this article to get to the part about bullet proof waistcoats. So here it is, JBS Ltd’s earlier registration covered bullet-proof waistcoats…but sadly that was not to be part of the UK IPO’s decision summary (I’ve highlighted it in the table below for fun through). I can confirm that I have looked into JBS’ offerings and can’t see this is a product on sale by them at the moment (someone please let me know if I am wrong!) and I’m still unclear on the difference between a bullet-proof vest and a waistcoat, except that all the bulletproof vests I spent some happy time internet browsing were camo designed, and the waistcoats a little more James Bond. Let’s just put them down to being in the same category as ‘why is a Raven like a writing desk’.

Learnings

A table summarising the similarity of the goods is set out at the footer of this article with commentary around likelihood of confusion. The points worth noting are as follows:

• Protective masks (Class 9) and Sanitising wipes (Class 5) are similar: both are designed to protect the user. Both are to prevent the spread of disease. They may be offered in the same premises, and the same aisles in shops, sharing the same trade channels.
• Protective masks (Class 9) and Face shields (Class 10) are identical.
• Gloves for the protection against accidents (Class 9) and medical gloves are similar: gloves are worn to avoid the spread of infection of disease. Despite one being made of thin stretch material and disposable, and the other being thicker durable materials that can be re-used, both are worn on the hands to offer protection. Even with different channels of trade, the UK IPO found a low level of similarity.

The relevant public was held to be either a member of the public or professional in the medical (or similar) industries. For both groups of consumers, the goods are everyday products, attracting no more than a medium degree of attention in their selection. The purchase will be mainly visual with consumers self-selecting the goods from the shelves of supermarkets or pharmacies or from the websites of such undertakings.

Conclusion

The specialist (here potentially a doctor or nurse) might be reliant on a brand name to show a mask as a Class I Medical Device – and the protection it affords them in their work environment. Showing again the value and importance of brand.

This case and regulation summary is also a stark reminder to be a savvy consumer this winter and consider the protection your brand and mask offers you. And so, whilst bullet-proof waistcoats weren’t important in this decision, face masks definitely were.

Similarity of goods & comments on the average consumer

Term in red in the left hand column is the term on which the UK IPO assessed similarity of the terms in the late mark.

Article co-authored by Sam Downing, Paralegal at CMS.

[1] Regulatory status of equipment being used to help prevent coronavirus (COVID-19) - GOV.UK (www.gov.uk)

[2] Guidance for manufacturers and makers of face coverings to comply with the General Product Safety

Regulations 2005, Version 6