Section 3(6) of the Trade Marks Act 1994 prohibits applications made in bad faith. Practice Amendment Notice 1/25 (PAN 1/25), released by the UK Intellectual Property Office, empowers UK trademark examiners to consider whether the specification of goods and/or services is “manifestly and self-evidently over-broad.” This development marks a shift in UK trademark practice.

PAN 1/25 comes in the wake of SkyKick UK Ltd v Sky Ltd [2024] UKSC 36, a ruling which clarified the scope and correct test to be applied when deciding if a UK trademark has been applied for in bad faith. From this, the UKIPO is trying to ensure that applicants act in good faith when using the trademark system, registering goods and/or services that represent fair and reasonable claims in the context of their businesses.

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SkyKick, the case and the outcome
SkyKick wanted Sky to provide a letter of non-infringement, leading to Sky suing SkyKick in the High Court. Sky based their claim on five registrations for the Sky mark, consisting of four EUTMs and one UKTM. SkyKick counterclaimed that these were registered in bad faith; Sky had registered things they had no intention of using at the time of filing.

The SkyKick decision set out bad faith claims as “the motive or intention of the applicant to engage in conduct that departed from accepted principles of ethical behaviour of honest commercial practices having regard to the purposes of the trademark system”. To infer bad faith, the court said that “the size and nature of the list of goods and services” can be used, where the list is overly broad and the applicant intends to use the mark in relation to some, but not all, of the goods and services within that category.

The Supreme Court endorsed that Sky had made the application in bad faith, at least in part. The argument was underpinned by how Sky enforced its trademarks. Even though enforcement is post-filing, bad faith is determined at the date of the filing.

Practice Amendment Notice 1/25, Good Faith and Bad Faith
Following SkyKick, the UKIPO felt it was important to clarify the expected behaviour of applicants. SkyKick’s bad faith parameters needed to be set out clearly so that applicants didn’t fall into it; PAN 1/25 is the solution for this.

Within PAN 1/25, it sets out several areas that applicants should exercise caution and care in, including:

• Where the application covers a “considerable number of goods/services over a large number of class headings.”
• When including broad terminology within the specifications that do not reflect the intended use of the trademark.
• Consider whether broad terms, like “clothing” or “hardware,” reflect intended use, or if sub-categories are more appropriate.

This practice note helps to bring certainty and allows for a degree of pragmatism. Examiners are expected to look at each application on a case-by-case basis. This allows for flexibility in the decisions they make, unless they make a broad claim in all 45 classes or covering all goods in Class 9 (related to technology, science, information processing, and software). The applicant can, of course, respond to all concerns and restrict specifications to prevent bad faith discussion.

Influence on practice
It’s important for applicants to avoid using class headings or alphabetised lists of goods and services. When broad terminology exists, the applicant needs to narrow the language down to the specifics, preventing examiners from flagging potential bad faith. The applications need to reflect the current and intended use to prevent potential accusations of bad faith.

While preparing for a trademark application, applicants need to prepare explanations for all their proposals and should be ready to explain their commercial decisions and prepare for the scope of their trademarks to be challenged.

Although PAN 1/25 is aimed at trademark applications, it will have impacts beyond. Accusations of bad faith can be brought up at any time within a trademark’s lifecycle, so older trademarks made before this directive could lead to claims of bad faith. The potential for the loss or partial loss of rights shouldn’t be understated. Companies with lots of trademarks should prepare for this by preparing explanations for previous and historic applications.

Overall, PAN 1/25 helps the UKIPO to prevent unnecessarily broad applications for trademarks, but it means applicants need to be cautious and thorough in their preparation. The new guidance requires careful consideration of applications. For companies and their advisers, this represents both a compliance challenge and an opportunity for a more defensive, specific trademark to be built.

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