On 27 June 2025, the UK IPO issued Practice Amendment Notice 1/25 ("the PAN"):
The PAN has immediate effect and addresses the impact of the Supreme Court decision in SkyKick UK Ltd and another v Sky Ltd and others (SkyKick) UKSC/2021/0181 of 19 November 2024 (the "SkyKick decision").
The SkyKick decision addressed bad faith in trade mark applications, particularly concerning overly broad specifications where applicants have no intention to use the mark across all the claimed goods or services.
The PAN empowers UK Examiners to consider whether specifications are "manifestly and self-evidently broad", and, if so, allows them to raise bad faith objections during the examination process.
According to the guidance, UK applicants should:
- ensure specifications represent fair and reasonable claims for their business
- be cautious when filing for large numbers of goods and services across multiple classes
- consider whether broad terms like "computer software" or "clothing" truly reflect intended use, or whether sub-categories are more appropriate
- be ready to explain their commercial reasons if challenged on the scope of an application
If examiners raise a bad faith objection, applicants will have two months to respond by either:
- providing an explanation of their commercial reasons for the broad specification
- restricting the goods/services to reflect their business more appropriately
It is important that applicants can back up, if necessary, their intention to commercialise the goods and services claimed. This could be achieved, by way of example, through documented and dated business plans showing genuine intent prior to filing an application.
Whilst we do not expect that the IPO will routinely challenge broad terms filed by larger corporate clients who are known to have a presence in the broader category of goods/services, they may selectively apply the guidance and applicants should be prepared to back-up their intentions in response, failing which to sub-categorise any broad terms claimed.
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