How the Supreme Court’s ruling in SkyKick v Sky is impacting the examination of UK trade marks: what PAN 1/25 means for new UK trade mark applications.

When is it happening?

The UKIPO’s recent Practice Amendment Notice (PAN) states that the approach taken by UKIPO trade mark examiners has changed with immediate effect, and that this change will predominantly affect the examination of UK trade mark applications - whether they be national applications, or international registrations designating the UK.

What is the change?

During examination, the UKIPO is now willing to raise an objection to a UK trade mark application on the basis that it was filed in bad faith - something the UKIPO has previously been reluctant to do.

The UKIPO may raise a bad faith objection against overly broad specifications of goods or services. When examining such specifications, the examiner shall consider whether they are so "manifestly and self-evidently broad" that a bad faith objection should be raised.

However, the UKIPO has stated that, at this stage, it will not automatically object to broad terms within specifications of goods or services. In other words, broad terms like “computer software” may not be objected to individually, but a broad specification comprised of such terms could be objected to. Nevertheless, applicants should exercise caution when considering the use of broad terms, as narrower, more specific sub categories are likely to be most appropriate. 

The UKIPO has also expressed that caution should also be applied “when the terms used to describe the listed goods/services are themselves broad” and that applicants “should also be mindful about the use of class headings.” 

Certain applications will automatically trigger objections, including claims covering all 45 classes or all goods in Class 9 (which covers a significant range of goods related to technology, science, information processing and software).

What can you do if a bad faith objection is raised?

If the UKIPO raises a bad faith objection, the applicant will be given two months to respond and to “provide an explanation of an appropriate commercial rationale for the goods/services concerned”. In addition to this explanation, or in the alternative, the applicant may choose to restrict the goods or services to a specification “that more appropriately reflects the commercial rational”. If the UKIPO is not persuaded to waive the objection based on the response, the applicant will have the opportunity to be heard and/or to appeal.

How will this affect applicants?

Whilst most applicants tend to file narrow specifications of goods or services comprised of narrow terms, this is not the case for every applicant. For example, individuals inexperienced in trade mark filings are more likely to file class headings simply because they may believe this to be ‘good practice’. 

Laypeople are therefore more likely to receive bad faith objections from the UKIPO and are inclined to seek legal guidance at a later stage - when such guidance should ideally have been sought prior to filing. This PAN is also likely to affect applicants with the mindset of ‘it was accepted before, why wouldn’t it be accepted again?’. 

Furthermore, although the UKIPO states that they will not automatically object to broad terms at this stage, there remains scope for such objections in the future. This PAN implies that broad terms are increasingly more ‘frowned upon’. 

Another point that is not yet clear - and one that may be clarified in the future -  is whether an application objected to by the UKIPO on the basis of bad faith is more (or less) likely to be successfully invalidated later down the line on the basis that the entire application was filed in bad faith. 

Finally, this change in approach is likely to lead to an increase in bad faith counterclaims during oppositions and invalidation actions. Overall, this PAN is likely to affect all applicants, though how it will affect each individual case remains uncertain.

Bottom Line

With all of the aforesaid in mind, what may seem like a simple PAN actually represents a surprisingly complex shift in practice at the UKIPO. As with all changes in practice, the application of this PAN may vary from case to case. Therefore, identifying the path of good-faith may become more difficult than ever. 

This brief overview of the UKIPO’s recent PAN highlights that it is increasingly important for applicants to seek professional advice from an experienced UK trade mark attorney prior to filing an application. If you have any queries, please do not hesitate to seek our guidance.