When a new trademark is filed, it is often tempting to secure a broad scope of protection and cover as many goods and services as possible. This may of course be in line with future goals and business plans of the trademark owner, but often the list of goods and services contains a number of vague or irrelevant items. Such an overly wide specification may ensure a broad scope of protection and exclude competitors, however it may well be contrary to the fair practices.
On November 13th, 2024 the UK Supreme Court issued its judgment where it confirmed that a broad specification of goods and services may constitute bad faith and a trademark may consequently be declared at least partially invalid. Bad faith can therefore be found if the list of goods and services contains a wide range of unspecified items lacking the intention to be used.
This long-awaited decision finalizes the dispute between Sky and SkyKick that started in 2016 and brings concerns to trademark owners whose specification of goods and services is too broad. For example, trademarks covering terms like 'computer software' without a specific purpose of the software may be attacked and eventually declared invalid.
Takeaways and recommendations:
- Avoid vague, imprecise categories of goods and services in the specification;
- Do not include categories that clearly fall outside the area of core business;
- Cover categories for which there is a true intention to use within the coming years;
- Proactively review and if necessary, limit the specifications of already filed and registered trademarks.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
