The UK IPO has issued a new Practice Amendment Notice 1/25 (PAN) in response to the Supreme Court’s ruling in SkyKick UK Ltd v Sky Ltd. The PAN clarifies the behaviour expected of trade mark applicants and announces for the first time that the UK IPO will be examining trade mark specifications for filings made in bad faith. 

Background

Section 3(6) of the Trade Marks Act 1994 prohibits the registration of a trade mark “…if or to the extent that the application is made in bad faith”. The Act does not provide for what constitutes bad faith. However, this principle has been developed through caselaw in the UK. The Supreme Court’s ruling in SkyKick UK Ltd v Sky Ltd reaffirmed that, while trade mark applicants do not need to be using a trade mark at the time of filing, they must have a genuine intention to use it for the goods or services listed in the specification. Applications filed without such intent—especially when covering a wide range of classes — may be considered an abuse of the system.

Historically, the UK IPO’s Examiners have not routinely examined the specification of goods and/or services in a trade mark application for bad faith – but, following the Supreme Court’s decision in SkyKick and this new PAN, that has changed. 

The UK IPO’s New Practice

The UK IPO’s Examiners will now raise bad faith objections during examination when a specification is “manifestly and self-evidently broad”. As a result, trade mark applicants should be cautious when filing for specifications covering vast numbers of goods and services in a large number of classes. Caution should also be applied when the terms used to describe the listed goods and/or services are themselves broad. Applicants should also be mindful about the use of class headings and should carefully consider whether the words used in a class heading truly represent a good faith filing for their business. The UK IPO has said that “this is particularly (but not exclusively) so for classes which cover a huge range of different (and disparate) goods/services. For example, class 9, which covers goods as different as ‘breathing apparatus for underwater swimming’ and ‘apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity’.” 

The PAN also explains that applicants should be cautious when using class headings across a multitude of different classes and due consideration should apply to the selection of general terminology such as ‘computer software’, ‘pharmaceuticals’, and ‘clothing’. That said, the UK IPO is not prohibiting the use of class headings or general terminology because, for some applicants, the use of such terminology may represent a good faith and reasonable claim. However, for these types of applications the UK IPO will consider an objection where appropriate. Filings for a trade mark application for all 45 classes or claiming all goods in broad classes like Class 9 will trigger automatic objections. 

Should a bad faith objection be raised, trade mark applicants will have two months to respond by either narrowing their specification or justifying it with a legitimate commercial rationale. If the Examiner is not persuaded to waive the objection, the applicant will retain the opportunity to be heard and/or to appeal.

Practical considerations

With the introduction of this PAN, trade mark applicants will need to ensure that their goods and/or services specifications are more precise and aligned with realistic business intentions. 

While the PAN only relates to the UK IPO’s examination practice, brand owners should be aware that relying on broad specifications in opposition and cancellation proceedings could invoke counterclaims on the grounds of bad faith.