The UKIPO provides guidance to trade mark applicants following the SkyKick decision

The UKIPO has updated PAN 1/25 to provide guidance to applicants following the judgment in the SkyKick v Sky decision which was issued by the Supreme Court at the end of 2024. This decision included a finding on bad faith in relation to trade mark specifications, particularly where an applicant has adopted a broad specification and where an applicant has no intention to use a trade mark across all of the goods and services for which protection has been claimed.

The guidance notes that examiners will now actively consider whether a specification is broad and may raise an objection on the grounds of bad faith if they believe that an applicant is not likely to have an intention to use their trade mark for the broad specification.

Applicants are therefore reminded to ensure that their trade mark specification represents goods and services on which they use their trade mark, or where they have an intention to use their trade mark (noting that this is not a new requirement) and be cautious when adopting broad terminology. Objections could now be issued and applicants may be invited to consider whether sub-categories are appropriate to describe their goods and services in more detail. Furthermore, the guidance suggests that applicants may now need to be in a position to explain their commercial motivations for filing broad terms if challenged, or agree to a restriction to their specification to reflect their intentions. How much detail the UKIPO will require is uncertain at the moment.

The UKIPO has also indicated that certain applications will automatically trigger objections - including claims covering all 45 classes or all goods in class 9 (i.e. relating to technology, science, information processing, software and related goods), but that most applications will continue to be dealt with pragmatically on a case-by-case basis.

For anyone who has been on the receiving end of an opposition filed by the owner of a trade mark with an unduly long and over-broad specification, this guidance is very welcome. However, it does come with the caveat that we will need to wait to see how the objections are issued and how much information the UKIPO will require from an applicant to overcome an objection.