The practical fallout of SkyKick – New UK bad faith examination procedure

Trade mark examiners will now consider if a new application has been filed in bad faith: guidance has also been issued on how applicants can avoid receiving such an objection.

The UK Intellectual Property Office (UK IPO) has issued Practice Amendment Notice 1/25 and accompanying guidance following the widely discussed Supreme Court judgment on bad faith in SkyKick v Sky delivered last year (see our commentary on that judgment here).

The notice focuses on two key areas:

1. An update on the new UK IPO trade mark examination procedure; and
2. Guidance as to when the filing of broad goods and services specifications may constitute bad faith.

Trade Mark Examination Procedure

After a UK trade mark application is filed at the UK IPO, it is examined by a trade mark examiner to establish if it meets various requirements (for example that it is distinctive and not descriptive). With immediate effect, examiners will now additionally routinely consider if an application is overly broad and therefore filed in bad faith based on a lack of intention to use the mark. This analysis rests on a consideration of the goods and/or services applied for (i.e. the ‘specification’). In particular, whether the specification is “so manifestly and self-evidently broad” that a bad faith objection should be raised.

Although bad faith is a subjective analysis specific to each application, certain specifications will automatically trigger objections. For example, where there is coverage of all 45 Classes, or all goods in Class 9 (which can cover entirely distinct products including sunglasses, fire extinguishers and gaming software that no single owner is likely to offer).

If a bad faith objection is raised, an applicant will have a two-month period to reply. In doing so, the applicant must either restrict its specification or explain the commercial rationale for its broad specification. If this does not overcome the objection, the applicant can request a hearing and/or appeal.

New Bad Faith Specification Guidance

New guidance has been issued to help applicants avoid such objections. Ultimately, specifications should be fair and reasonable to the applicant’s business. Best practice requires an applicant (and their representative) to:

• ensure any trade mark application is filed with an intention to use the mark for all of the goods and/or services applied for (this includes not filing for broad terms where use is only intended in some sub-categories, for instance covering ‘clothing’ but only intending to use the mark on ‘coats’);
• be cautious when filing for many goods and services across multiple classes and when covering class headings or broad terms (such as ‘computer software’, ‘pharmaceuticals’ or ‘clothing’); and
• be ready to justify a broad specification if an objection is raised.

Comments

The notice reaffirms the message from the Supreme Court – trade mark owners must ensure their trade mark specifications are appropriate and reflect a genuine intention to use the mark for the relevant goods and/or services. It is also a useful reference point for third party proceedings, such as oppositions and invalidity actions at the UK IPO, reminding trade mark owners to be wary if seeking to rely on a right with an overly broad specification, as doing so could lead to a bad faith counterclaim. Overall, this is a welcomed notice that should lead to less clutter on the register, meaning that trade mark clearance and third party actions are more streamlined.

How can we help?

We assist with the full lifecycle of trade marks, including trade mark portfolio management and filing applications. If you wish to discuss any of the matters raised in this article, please do get in touch with Emily Roberts, Laura Tennant or Bethany Wheeler-Fowler.

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