Following the landmark decision issued by the UK Supreme Court in SkyKick UK Ltd and another v Sky Ltd, the UK Intellectual Property Office (“UKIPO”) has issued a new Practice Amendment Notice (“PAN”) providing guidance and new rules regarding the breadth of goods and services included in trade mark applications – see Practice Amendment Notice 1/25 - GOV.UK.
Background
UK legislation prohibits registration of a trade mark “if or to the extent that the application is made in bad faith”. Bad faith challenges are typically raised by third parties in opposition or invalidation proceedings (as was the case in Skykick) and not by the UKIPO during examination.
The judgment in Skykick confirms that a finding of bad faith may arise in circumstances where an application / registration includes a very broad range of goods and services, or where certain terms are too broad in nature if it is demonstrated that the applicant did not have a bona fide intention to use the mark for such goods and services at the time the application was filed.
The UKIPO has now considered the decision and issued guidance to trade mark applicants concerning the description of goods / services. Those who fall foul of the guidelines may now face bad faith objections from the UKIPO at the examination stage.
UKIPO’s new expectations for trade mark applicants:
Applicants are advised to limit their applications to goods and services “which represent fair and reasonable claims in the context of their business, for the purpose of denoting trade origin”. This will be assessed by the UKIPO on a case-by-case basis and will depend on the nature of the relevant applicant’s business and its motivations.
In particular, trade mark applicants should be cautious about:
- including a large number of goods / services in a large number of classes;
- using terms to describe goods / services which are wide in themselves and could encompass a large variety of subsets (such as computer software, pharmaceuticals or clothing); and
- using class headings, particularly where a class covers a disparate range of goods / services, such as class 9, for example, which includes computer software, fire extinguishers and bicycle helmets.
The PAN expressly refers to the Supreme Court’s decision in Skykick and confirms that a trade mark applicant does not need to have a “settled or developed intention” to use the mark for all of the goods or services sought as at the date application, nor is the applicant required to have an existing business offering such goods and services. However the applicant should have an “intention to use the grace period to establish, or explore the viability of a relevant business”.
Impact on the examination of trade mark applications:
From now on, the UKIPO examiners will raise a bad faith objection pursuant to this PAN if “the specification is so manifestly and self-evidently broad”.
The Examiners will automatically raise such objections if an application includes goods / services in all 45 classes, or encompasses all terms in class 9.
In other cases, decisions to issue bad faith objections will be based on an overall analysis taking into account the PAN guidance.
The PAN states that, at this time, the UKIPO will not automatically raise objections to the inclusion of terms which are broad in scope, such as computer software or clothing. However, applicants are advised to consider if a narrower description would be more appropriate for their own intended use.
Applicants facing bad faith objections during examination will be given the opportunity to explain to the UKIPO their commercial rationale for covering certain goods and services, and will have the right to be heard and/or file an appeal if an objection is not waived.
Conclusion
This guidance from the UKIPO is welcome. Whilst the breadth of specifications in applications will be assessed on an individual basis balancing several factors, the PAN provides a clear recommendation to businesses to limit coverage of their trade mark applications to goods and services for which they can demonstrate a genuine intention to use and/or an intention to consider or explore the business viability of offering such goods and services within the next five years.
We recommend that clients keep an internal record of their decision making regarding the scope of specification sought, and inhouse teams should avoid including goods and services merely to maintain optionality unless there is a clear intention to dedicate resources to consider the development of a business in respect of such goods and services within the next five years.
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