"Sky-high" trade mark specifications will be assessed for bad faith

Applicants for UK trade marks may face an additional barrier to registration, as examiners are empowered to raise "bad faith" objections to overly broad specifications of goods and services. 

The UK Intellectual Property Office has released Practice Amendment Notice 1/25 ("PAN 1/25") following the Supreme Court's decision in the case of Sky v SkyKick (see full article here), with immediate effect.

While PAN 1/25 recognises the benefits of not requiring an applicant to have used a trade mark prior to filing, it notes that the regime is open to abuse. Applicants may obtain protection for purposes other than indicating trade origin – for example, as a legal weapon to block or undermine third party activities, and create a barrier to market entry. 

Tips for filing going forward

• Applicants are expected to act in good faith, use the system for its intended purpose, and should satisfy themselves that they are acting in good faith. A good faith filing will not likely be achieved without an intention to use. 
• Applicants with an existing portfolio, with a "ready-made" specification of goods and services, should assess whether it continues to be appropriate to the evolving state of their business.
• Keeping records of commercial rationale for making the application for the goods/services concerned is prudent, as an absence may support a finding of bad faith. It may be useful if at least some of these notes are internal – not between client and legal representative, so potential complications surrounding legal advice privilege do not arise.
• Applicants should apply for "fair and reasonable" goods and services in the context of their business. This may have particular impact on using general terms covering a multitude of sub-categories, where it would be reasonable to cover only one (or some) of those sub-categories. However, PAN 1/25 recognises that a broad descriptor may be good faith for one applicant, and bad faith for another.
• PAN 1/25 is unequivocal that applicants should be cautious about filing claims covering a vast number of goods and services in large numbers of classes. Attention should be paid to the terms used (especially if they are broad – e.g. "computer software" or "pharmaceuticals"), with due consideration as to whether the words used truly represent a good faith filing for their business. 

PAN 1/25 makes clear that the practice will also apply to International registrations designating the UK. 

Although PAN 1/25 provides that an apparent failure to adhere to the identified considerations will not automatically result in an objection – as it will be assessed on a case-by-case basis – it does identify instances where examiners will always raise an objection, such as claims covering broad lists of goods and services in all 45 classes, or covering all goods in class 9. Apart from these, the UK Intellectural Property Office has not prescribed the exact circumstances where an examiner should intervene. 

As per usual practice, if an objection is raised by an examiner, the applicant will be given an opportunity to provide an explanation of the appropriate commercial rationale and, if the objection is maintained by the examiner, a further opportunity to be heard and/or appeal. 

Interestingly, whilst PAN 1/25 is primarily directed to examination practice, it notes that relying on (already granted) overly broad specifications in oppositions and cancellation actions may lead to counterclaims on bad faith grounds. 

If you require any further advice (application strategy, challenging existing registrations, reviewing your specification of goods and services), please contact our Intellectual Property team.