Following the Sky v SkyKick judgement, issued in December 2024, the UKIPO has now issued a practice note providing applicants with guidance on drafting and filing trade mark applications in the UK. Sky v SkyKick highlighted that filing an application for unduly broad specifications of goods and services with no genuine intention to use the mark can constitute bad faith and applicants are now provided with the tools to avoid the most common pitfalls.
Changes to UKIPO Examination Practice
UKIPO examiners are now actively assessing whether or not the specifications of goods and services are "manifestly and self-evidently broad". Most importantly, examiners may now issue bad-faith objections at the examination stage, as there is no requirement to wait for third party objections. Upon receiving the examination report, applicants will have the standard two-month window to respond and they can either restrict the objected goods and services or provide arguments and evidence justifying the broad scope initially claimed.
How to be Compliant
Applicants should now consider the below guidelines when filing a trade mark application in the UK:
- Applicants are expected to include in their applications goods and services which "represent fair and reasonable claims in the context of their businesses". It is recommended to thoroughly review the proposed specifications before filing an application.
- Be cautious of using overly broad terms when there is no intent to use (e.g. "computer software" is not an acceptable term, the type of software should also be specified). This would benefit the applicant in the long term as its rights will be clear to both the UKIPO and third parties.
- Opt for narrower specifications where possible or ensure to pair any broad term with narrower sub-categories. This would prevent having to deal with ex officio objections that may delay the registration process.
- Keep records of internal documentation such as business plans and market research that evidence why each term has been included in the application. This would assist with providing a commercial justification to the UKIPO if required.
Takeaways
Overall, it is worth noting the UKIPO change of approach which will result in increasing examination reports, possibly based on bad faith objections. This may impact on the time required for a mark to reach registration and may involve more substantial dialogue with the examiners that can request internal records on a case by case basis.
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.
