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

England and Wales

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):

Type of Mask

Purpose

Regulation

Surgical (medical) face masks

These are mainly intended for health care staff to wear to protect patients during surgical procedures and other medical settings.

Class I Medical device.

UK Medical Device Regulations 2002 (SI 2002 No 618, as amended) (UKMDR2002) and beCE,CEUKNI or UKCA marked before you can sell them in the UK.

Transparent face masks

Intended to protect patients

Class I Medical device.

Updated guidance of 14 February 2022 for ‘Transparent face mask technical specification’: Transparent face mask technical specification - GOV.UK (www.gov.uk)

Face masks intended to protect the wearer (PPE) – Personal Protective Equipment

If your masks are intended to protect the wearer, they are regulated as personal protective equipment and need to meet the regulations covering PPE products.

Not medical devices.

PPE regulation and guidance to be adhered to

Compliance with regulation covering PPE: Personal protective equipment (PPE) (europa.eu)

Guidance provided by Office for Product Safety and Standards (OPSS)

Face coverings

Intended for use by the general public

Not PPE, not medical devices.

Product must meet the requirements of the General Product Safety Regulations 2005 (GPSR)

Guidance provided by Office for Product Safety and Standards (OPSS): Guidance for manufacturers and makers of face coverings to comply with the General Product Safety Regulations 2005 (publishing.service.gov.uk) (“GPSR 2005”)

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.

Earlier specification for OPTIPRO

Opponent’s Goods

Later specification for OPTIPRE

Applicant’s Goods

Commentary on similarity of goods

Class 9: Gloves for protection against accidents; bullet proof waistcoats; footwear for protection against accidents, irradiation and fire; eye glasses; Eyeglass frames; protective goggles; Protective helmets; protective headgear; protection devices for personal use against accidents; protective masks; protective suits for aviators; clothing especially made for laboratories; clothing for protection against accidents, radiation and fire; workman's protective face shields, headphones; ear buds.

Class 5: Sanitising wipes; antibacterial wipes; impregnated medical wipes; hand sanitising preparations; medicated and sanitising soaps and detergents; antibacterial and sanitising sprays.

Similar to a low degree

Protective masks in JBS’ specification is not limited in any way to a particular industry or field, or to a particular purpose; it is a broad term which, regardless of its class, would cover all types of masks designed to protect the user, whether that protection is against accidents, disease, pollution or inhalants, for example.

Protective masks clearly have a different physical nature… However, the goods may overlap somewhat in their purpose: for preventing the spread of disease, resulting in an overlap in end users. They may also be offered in the same premises and, in some circumstances, in the same aisles, likely sharing trade channels.

Earlier specification for OPTIPRO

Opponent’s Goods

Later specification for OPTIPRO

Applicant’s Goods

Commentary on similarity of goods

Class 9: Gloves for protection against accidents; bullet proof waistcoats; footwear for protection against accidents, irradiation and fire; eye glasses; Eyeglass frames; protective goggles; Protective helmets; protective headgear; protection devices for personal use against accidents; protective masks; protective suits for aviators; clothing especially made for laboratories; clothing for protection against accidents, radiation and fire; workman's protective face shields, headphones; ear buds.

Class 25: Clothing; footwear; headgear.

Class 10: Face shields for medical use; face shields for protection against infection; transparent face shields for use by medical personnel; face masks for medical use; protective face masks for medical use; face masks for use in the prevention of infections; surgical face masks;

Identical

What is pertinent is the core meaning of the terms in the specifications, and it is important to highlight that whilst OMS’ face masks and face shields are listed for particular purposes, the protective masks in JBS’ specification are not. Accordingly, JBS’ term could incorporate OMS’ terms, resulting in identity in accordance with Meric.

Class 9: Gloves for protection against accidents; bullet proof waistcoats; footwear for protection against accidents, irradiation and fire; eye glasses; Eyeglass frames; protective goggles; Protective helmets; protective headgear; protection devices for personal use against accidents; protective masks; protective suits for aviators; clothing especially made for laboratories; clothing for protection against accidents, radiation and fire; workman's protective face shields, headphones; ear buds.

Class 25: Clothing; footwear; headgear.

Class 10: medical gloves; surgical gloves; gloves for use in dentistry; latex and rubber gloves for medical use; protective gloves for use by persons working in medicine and dentistry;

Similar to a low degree

OMS’ gloves – medical gloves; surgical gloves; gloves for use in dentistry; latex and rubber gloves for medical use; protective gloves for use by persons working in medicine and dentistry – are gloves worn to avoid the spread of infection or disease; they are made of a relatively thin, stretchy material and are usually disposable.

JBS’ gloves, on the other hand – gloves for protection against accidents – are evidently for the purpose of protecting the user against accidents. They are highly unlikely to be made of a thin material as that would offer very little protection against accidents such as cuts and burns, for example: on the contrary, they are likely to be made of a much thicker and more durable material and will most likely be reusable as opposed to disposable.

Both groups of goods are worn on the hands of the users to offer protection and so there is an overlap in method of use, but the physical nature of the goods differs. In circumstances where disposable latex gloves are suitable for offering some protection against accidents, the users may overlap and there may be an element of competition. I consider the goods to reach the market by different trade channels and to not be complementary. Overall, a low degree of similarity between the goods.

Class 9: Class 9: Gloves for protection against accidents; bullet proof waistcoats; footwear for protection against accidents, irradiation and fire; eye glasses; Eyeglass frames; protective goggles; Protective helmets; protective headgear; protection devices for personal use against accidents; protective masks; protective suits for aviators; clothing especially made for laboratories; clothing for protection against accidents, radiation and fire; workman's protective face shields, headphones; ear buds.

Class 25: Clothing; footwear; headgear.

Class 10: Disposable aprons for medical and surgical use

Identical

JBS’ clothing especially made for laboratories could include aprons, resulting in identity between these goods in line with Meric

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