The UK Intellectual Property Office (UKIPO) has published a new guidance following the pivotal ruling in SkyKick UK Ltd and another v Sky Ltd and others (SkyKick). The updated Practice Amendment Notice 1/25 refines the examination practices at the IPO and outlines the implications of the judgement for new applicants when filing specifications of goods and services. Such changes are to come into effect immediately.
Background
Section 3(6) of the UK Trade Mark Act 1994 prohibits registration of a trade mark “if or to the extent that the application is made in bad faith.” What constitutes ‘bad faith’ is not legislatively defined, however, has been interpreted by the courts. Most notable is the recent Supreme Court Judgement in SkyKick following a long-running dispute between the parties. While the court confirmed a finding of infringement of Sky’s trade marks by SkyKick, it was found that Sky’s registrations contained excessively broad specifications across a range of goods and services for which there were no genuine intention to use the mark, and therefore, partially invalid on bad faith grounds.
Under the new guidance, examiners will now actively consider whether a specification is “so manifestly and self-evidently broad that a bad faith objection should be raised.” It follows that that certain applications claiming all 45 classes or all goods/services in those classes for example, will now automatically trigger an objection.
Looking Ahead
As a general rule, applicants should ensure that their specifications include goods and services which represent “fair and reasonable claims in the context of their business.” Going forward, applicants should exercise caution when filing a vast number of goods and services across a broad range of classes, or when using broad terms such as clothing, software, entertainment etc. That said, a pragmatic balance needs to be struck to not file too narrowly to restrict opportunities for business expansion.
Should an objection be raised by an examiner, applicants must be prepared to explain the commercial rationale behind the goods/services concerned. Paragraph 15 of the PAN 1/25 provides a 2-month period for a response. If the examiner refuses to waive the objection, applicants will still have the opportunity to be heard and to appeal. If the applicant genuinely is going to offer all goods/services applied for and can provide a justifiable commercial rationale and reasoning, we would expect the objection to be overcome.
Finally, opponents and cancellation applicants are also encouraged to be mindful of the changes above. as relying on broad specifications may lead to counterclaims from the other side on bad faith grounds. This has already been happening since the SkyKick judgement though in practice, but it is worth a reminder that this is possible as part of the proceedings before the UKIPO.
Mathys Comment
This is not an unexpected development by the UKIPO, but it will cause challenges for applicants who are used to filing with broad specifications (both in terms of classes and goods within the same class). Whilst the UKIPO does have an effective online tool to assist with drafting specifications, given the drafting of such defines your protection (and scope to challenge moving forwards) we would certainly recommend seeking advice from one of the Mathys trade mark team to ensure a) your specification covers you now (and moving forwards) and b) will ideally not trigger an objection.
Between August and October 2023, the UK government launched its Second Transformation Consultation to support the UKIPO in delivering improved digital services. One key proposal is to change, or potentially abolish, the use of series trade marks.
Series trade marks are a unique feature of the UK system, allowing applicants to register up to six similar marks (e.g. logos in different colours, differences in capitalisation, minor variations of spelling) in a single application at a reduced cost. This option is not available in other systems such as the EUIPO or the Madrid Protocol. Applicant’s were able to apply for up to six marks in a series, in accordance with Section 41(2)(a) of the Trade Marks Act 1994:
”A series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.”
Series marks are particularly useful when a logo appears in multiple colour variations or has several common adaptations, as they extend protection to all versions. They are also advantageous when a logo includes variations in visual elements, such as differences in colours, icons or stylised text, depending on the context. Overall, series marks offer broad legal protection while allowing for flexibility in how the logo is used across different scenarios. Despite variations in the marks, a series trade mark ensures consistency in the brand identity, protecting the core mark while enabling adaptation for numerous applications.
However, on 10 April 2025, the UKIPO published the consultation report and found that many applicants find series marks confusing. Specifically, 65% of applications are filed without professional representation, and in 2022, 39% were objected to for not meeting the legal criteria for registering a series of trade marks. This can lead to additional costs for applicants who need to file new applications. However, applicants would need to at least double filing costs without the series mark being available if they wanted to file more than one variant of their mark, so it is difficult to see how not having the series mark would lead to a cost saving on the whole. Furthermore, the UKIPO is of the opinion that series marks provide limited additional legal protection, reducing their overall value for money.
While this is arguable as we have found series marks to be a very beneficial tool for brand owners when used correctly, we do acknowledge that the UKIPO’s approach to assessing the validity of a series trade mark application is strict and any variations as to the distinctiveness of the mark to the point where the overall identity and impression of the trade mark has changed, even due to variations of colour, the application can be objected against or refused.
Professional representation is key to making the most out of the series system in the UK and it is somewhat disappointing that the UKIPO have decided to phase these marks out. While existing series marks will remain valid, the UKIPO expects to phase out the option for new applications once its new digital trade mark service launches. A specific date for this change has not yet been confirmed. If you have any marks which could constitute a series it would be beneficial to file them sooner rather than later.
In addition to developments at the UKIPO, as part of its digital transformation, the UKIPO will soon make trade mark and design documents, such as examination reports, available online for the first time through the new One IPO Search tool, bringing patents, trade marks, and designs into one unified platform.
Government response to the Second Transformation Consultation report below on series trade marks applications and more here.
This June marks Pride month, a time to celebrate the talent, creativity and innovation demonstrated by members of the LGBTQIA+ community, and reflect on the challenges and discrimination many would have faced particularly in their professional careers.
Whilst there has been progression over the years, it is no secret that we still live in a time where many are unable to feel empowered as their authentic self. Therefore, by acknowledging the following engineers and technical experts, we not only honour their scientific contributions, but also highlight the importance of visibility and representation. The following people serve as powerful role models to the next generation, inspiring and empowering others to pursue their ambitions with confidence and pride.
Frank Kameny had a passion for astronomy from a young age, majoring in Physics in his degree at Queens College and completing his PhD later at Harvard University. He worked for the Army Map Service, working to develop and analyse astronomical maps during the conflict between the Soviet Union and the US. Unfortunately, he was fired shortly after it came to their attention that he identified as gay, and with his security clearance removed, he was no longer able fulfil this passion. In 1961, he became the first to petition the Supreme Court with a discrimination claim based on sexual orientation, and committed to being a LGBTQIA+ activist, organising protests and assisting others with their discriminatory law suits.
On 18 June 1983, Sally Ride became the first American woman to travel to space, as she completed her journey on the Challenger’s STS-7 mission. Beyond her vital work at NASA, she founded Sally Ride Science, a non-profit organisation which encouraged women to pursue STEM subjects. Sally had preferred to keep her identity as part of the LGBTQIA+ community private until after her death, in which she posthumously revealed that she had an intimate relationship with her working partner, Tam O’Shaughnessy. In 2013, the year after her passing, she was honoured with the Presidential Medal of Freedom by President Obama.
In the 1960s, Edith Windsor was a pioneering computer programmer who exceeded in her career. She famously worked at IBM for 16 years, reaching the greatest possible position as a Senior Systems Programmer, a feat even more impressive as a woman in this era. She was an LGBTQIA+ activist and played a vital role in the Supreme Court case Windsor vs United States, in which she famously argued for a tax refund after the passing of her partner, which led to the court granting more benefits to same-sex couples. People often reference this as a turning point for same-sex couple in the US, and she is therefore remembered with the utmost respect. In 2013, she was a finalist for TIME magazine’s Person of the Year, and was described by TIME as “the matriarch of the gay-rights movement”.
Nergis Mavalvala is an astrophysicist who played a key role in the discovery of gravitational waves from the collision of two black holes. In his theory of general relativity, Albert Einstein had theorised this phenomenon, but it was Nergis and the rest of her team who were able to confirm this. Nergis has always been thoroughly committed to her education, completing her doctorate degree at the Massachusetts Institute of Technology in Astrophysics. She refers to herself as an “out, queer person of colour”, and dedicates herself to challenging discrimination in STEM.
Audrey Tang is a computer scientist who first brought attention to their technological skill in 2014 during the Sunflower Protests in Taiwan as an open-source hacker, by helping to stream videos of the movement across the country. Tang later joined the ministry at 35, becoming the first ‘Digital Minister’ and Taiwan’s first transgender and non-binary minister. They have since been involved in revolutionary programmes, such as an educational initiative that helped equip young people with skills to identify fake news stories, as well as developing the ‘Mask Map’ during COVID-19, an online application which showed where masks were available to purchase during a national shortage.
At Mathys & Squire, we believe it is essential that everyone feels empowered to bring their full, authentic selves to work. We are deeply committed to fostering a workplace culture where diversity is celebrated, inclusion is prioritised, and everyone feels respected, valued, and supported.
Click here to read more about our Diversity & Inclusion policies.
IPSS Electra Valentine has co-written an article highlighting the meaning of Juneteenth as part of her role on the IP & ME committee at IP inclusive.
Yesterday marked Juneteenth, a significant day commemorating the end of slavery in the United States. It serves not only as a moment to celebrate freedom, but also an important opportunity to deepen our understanding of Black history, culture, and the ongoing journey toward equality.
The article examines the historical context of this day and considers its relevance and significance for IP professionals based in the UK, highlighting how its themes of freedom, justice, and inclusion resonate within the industry today.
Click here to read more.
In celebration of our 115th anniversary, we are proud to have planted 115 trees in partnership with Trees for Life. Each tree symbolises a year of growth, resilience, and our continued commitment to building a better, greener future.
As we celebrate our 115th anniversary, we have a valuable opportunity to reflect on our history and acknowledge the people, milestones and moments that have helped shape our firm. It is also a time in which we can look ahead with purpose, recognising the vital role that we play in shaping a more sustainable world and promoting positive change for future generations.
At Mathys & Squire, we firmly believe that protecting the environment is not just a responsibility, but a necessity. Through initiatives like this, and through the continued integration of environmentally conscious practices in our day-to-day operations, we are committed to contributing to a more sustainable world.
Click here to find out more about our CSR initiatives.
We are delighted to announce the appointment of senior trade mark attorney Claire Breheny as our new Head of Trade Marks.
Joining from Stobbs, where she served as an IA Director and Head of Support, Claire has nearly two decades of experience working across trade marks, registered and unregistered designs, copyright, and cross-border portfolio management and enforcement.
Recognised in leading industry rankings such as the World Trademark Review 1000, Legal 500, World Intellectual Property Review Leaders and Thomson Reuters’ Stand-out Lawyers 2024 and 2025, Claire has consistently been acknowledged for her expertise, and she is widely regarded as being at the top of her profession, both by peers and clients.
Claire is also a member of the Intellectual Property Regulation Board’s Joint Disciplinary Panel, reflecting her status as a trusted figure in the profession.
Claire is known for her strategic insight and ability to manage complex multi-jurisdictional disputes, including strategic use of litigation where needed, and leading global settlement negotiations for her clients. She has worked extensively with clients with a worldwide presence, and specialises in acting for UK brands with international portfolios and US clients targeting UK and EU markets.
Partner Gary Johnston says: “We are progressing our strategy to further develop and grow our trade mark capabilities to attract more top-tier clients and enhance our reputation as a leading player in the IP legal space. Claire’s appointment is the next big step in this process.”
Claire says: “I am delighted to join Mathys & Squire at an exciting time for the firm. I bring a wealth of experience advising on global trade mark portfolios, managing complex multi-jurisdictional disputes, and developing commercially focused IP strategies.”
“I am looking forward to helping strengthen the firm’s reputation in the trade mark space, growing the team, and deepening relationships with clients across key international markets.”
This press release has been featured in The Trademark Lawyer, World IP Review, Commercial Dispute Resolution and Managing IP .
We are delighted to announce that we have received the ‘Intellectual Property Law Firm of the Year – London 2025’ award, granted by Legal Insider.
The Legal Insider Awards celebrate firms that demonstrate outstanding legal expertise, client service and contribution to the legal sector. The awards are decided by an expert panel of judges who evaluate all of the available data to make the most fair and suitable decision for each category.
To be selected for this award is an honour and a great reflection of the exceptional work of our team. This recognition also highlights our ongoing commitment to excellence and leadership in the field of intellectual property law.
Find out more about our award here.
Mathys & Squire Partner Edd Cavanna has been featured in Practical Law with an article on the restrictive nature of the UK’s patent assessment framework in the field of AI and quantum computing.
Read the article below.
This article first appeared in the June 2025 issue of PLC Magazine.
In recent years, the IT sector has grown rapidly, with two strong drivers being AI and quantum computing (see box “What is quantum computing?”). In June 2017, PwC’s Global Artificial Intelligence Study estimated that AI could boost the world economy by $15 trillion by 2030 (www.pwc.com/gx/en/issues/analytics/assets/pwc-ai-analysis-sizing-the-prize-report.pdf). In April 2024, McKinsey & Company’s Quantum Technology Monitor reported that the quantum computing industry alone could add around $2 trillion to the world economy within a decade (www.mckinsey.com/capabilities/mckinsey-digital/our-insights/steady-progress-in-approaching-the-quantum-advantage).
While it is easy to view this growth solely through a financial lens, the implications reach much further. It is no exaggeration to say that the IT sector is on the cusp of a paradigm shift. The UK needs a robust strategy to capitalise on its strong academic sector. Driving innovation in the IT sector is important both for national security and to position the UK as a world leader. Part of this strategy will involve ensuring that innovators are able to corner the market in their respective fields.
While there are many social and political factors that may contribute to this strategy, this article focuses on the interplay between intellectual property law and the IT sector. In particular, the ability to patent technological inventions is a core factor in the attractiveness of both investment in, and the operation of, innovative technology solutions.
The current UK framework for patenting AI and quantum computing inventions risks falling out of date and making the UK less attractive for innovators. The UK must take steps to update the patent assessment framework in order to realise the benefits of these exciting technological advances.
A historical view
The present situation can be traced back to 1977, when the UK was heavily involved in negotiating the European Patent Convention (EPC), which is the legal text that provides for patents to be granted centrally by the European Patent Office (EPO) and validated across Europe. The EPC required each signatory to harmonise its law so that there could be no disagreement regarding the national validity of the centrally granted patents.
Patent law in the UK was last substantially updated by the Patents Act 1977 (1977 Act), a large part of which was intended to harmonise UK patent law with the EPC. It was also at this time that the question arose of whether, and to what extent, software should be patentable. Essentially, the 1977 Act sought to delimit generic software, which was intended to be excluded from patentability, from software that is directed to some technical purpose, which could be protected.
At that time, it was not possible to predict that the IT boom of the 80s and 90s was just around the corner, let alone foresee the more recent progress made in AI and quantum computing. Software was reasonably perfunctory and seemed to be adequately protected by copyright law. Nevertheless, the drafters of the EPC did consider that there might be future developments and included a proviso that software would only be excluded from patentability to the extent that the patent application related to software “as such” (see feature article “Artificial intelligence: navigating the IP challenges”, www.practicallaw.com/w-015-2044).
Over the following years, both the UK Intellectual Property Office (IPO) and the EPO developed case law to try to delineate the boundaries of the “as such” clause. While each body went through periods of greater or lesser enthusiasm for software patents, and each developed its own framework for assessing compliance, the two systems remained in remarkably close agreement on what should be allowed at any given time. This was crucial in order for patent holders and their competitors to have reasonable certainty in the validity of patents in the UK, irrespective of whether they were granted by the IPO or the EPO.
The current situation
From the perspective of patent attorneys using the system, it has felt like the IPO and the EPO have been diverging on their approach for the past few years. This divergence came into sharp focus with the explosion of innovation in the fields of AI and quantum computing.
When a new technology causes rapid developments, it is understandable that patent offices become more conservative, as has happened in this case. In short, they are concerned that patents will become too easy to obtain if patent offices become dazzled by shiny new technology which, as it achieves what was previously impossible, can seem more technical at the time of invention than it may later seem with hindsight.
As each new technology gains importance, it is vital that patent offices play their core role in encouraging innovation. Both the IPO and the EPO have, in essence, attempted to fit these new technologies into their existing frameworks for assessing software. They are necessarily bound not just by their (nominally harmonised) legislation, but also by the nearly 50 years of case law interpreting the legislation. In each case, the view appears to be that inventions in AI or quantum computing can be protected. However, the European framework has seemingly led to a more receptive system where it appears that, for the time being at least, there is better engagement with new technologies from the patent examiners.
This has meant that applicants are more attracted to the European patent system than the UK system. In addition, the European system allows for protection in up to 45 jurisdictions. Furthermore, as highly technical fields such as AI and quantum computing tend to rely on international talent, the conclusion is clear: in order to become a world leader in these technologies, the UK will need to persuade talent to come, and to stay. The UK must provide its businesses with legal certainty and protection.
During 2025, the Supreme Court is due to hear arguments about the patentability of software in the long-running proceedings in Comptroller-General of Patents, Designs and Trade Marks v Emotional Perception AI Ltd ([2024] EWCA Civ 825; see News brief “Artificial neural networks: Court of Appeal examines patentability”, www.practicallaw.com/w-044-2469). In this case, the IPO refused a patent application on the grounds that the relevant technology, which recommended music tracks based on an “emotional similarity” with other music tracks, was mere software.
Emotional Perception is interesting because the arguments presented cast doubt on the meaning of “a program for a computer” in section 1(2)(c) of the 1977 Act. In cases where the invention is, or is implemented in, a neural network, a part of the invention is encapsulated in the weights learned by the nodes of the network. It is not wholly apparent that this is best viewed as either software or hardware. It is encouraging that the IPO has engaged with the judicial process to help bring clarity to the situation.
While no corresponding case is working through the courts for quantum computing, in January 2025, the IPO updated its guidance to simply state that quantum computers should be treated in the same way as classical computers (www.gov.uk/government/publications/examining-patent-applications-relating-to-artificial-intelligence-ai-inventions).
While this may be true in a very broad sense, in that the quantum computing system is performing technical processes to qualify for patentability, it largely discounts the core features that make quantum computing so powerful, such as parallelism and superposition states. In practice, this could result in significant restrictions for patenting quantum computing software.
The difficulty of patenting quantum computing software is demonstrated by some recent Hearing Officer decisions at the IPO in which the special quantum processes were given short shrift (River Lane Research Ltd, BL O/130/22; Odyssey Therapeutics UK Limited, BL O/1193/23; 1QB Information Technologies Inc, BL O/935/22). This is not to say that the IPO is refusing to accept this new technology, but that the patent examiners are just as constrained by the assessment framework as the applicants.
It is not just the EU that the UK is competing with in this field. Major markets, such as the US and China, will also be forming their own pathway. For now, the US appears to be caught in a particular swing of the pendulum to being more restrictive about software in general, following the US Supreme Court decision in Alice Corp v CLS Bank International (573 US 208 (2014)). By contrast, China appears to be a welcoming market for these advanced technologies, at least in terms of patentability.
Where next?
The antidote to this competitive threat lies in ensuring that the IPO’s patent application guidelines are regularly updated in a pragmatic and fair manner. Training patent examiners to assess these new technologies, both from a technical and a legal point of view, is also critical. In addition, as Emotional Perception reaches its conclusion, some clarity should arrive regarding the patentability of software in general in the UK.
However, the UK should go further than this. It is currently operating within a framework in which software is assessed by rules that were created to deal with highly procedural classical software. The changes in the past 50 years in this field have been phenomenal and it is no surprise that the legal framework has struggled to keep up.
This naturally leads to the view that the UK should consider changing how it treats inventions in the fields of AI and quantum computing to make it easier to patent this technology. Such inventions are not mere software in line with the simplistic view that anything running on a computer is necessarily software; they show remarkable ingenuity by performing in genuinely new and technical ways. The existing UK framework is general enough to be interpreted to achieve this change without overturning any case law. The remaining question is whether it is brave enough to go first.
What is quantum computing?
Quantum computing is a technology that is based on the principles of quantum theory. It seeks to harness the subatomic physics of quantum mechanics where particles can occupy more than one value or state. In data processing, binary digits (bits) have one value (0 or 1) or occupy one of two states (on or off). A quantum computing bit (qubit) can simultaneously have more than one value or be in more than one state. Quantum computing increases the number of computations that can be processed concurrently, therefore enhancing the speed of computer processing.
Mathys & Squire Partner Andrew White has been featured in articles by The Financial Times, The Telegraph and the World IP Review with his commentary surrounding the significant global increase in drone patent applications, and the major contribution that China has to these emerging figures.
Read the extended press release below.
The number of patents granted in relation to drone technology has increased globally by 18% to 7,890 in the last year, up from 6,686 in the year previous, shows new research from leading intellectual property (IP) law firm Mathys & Squire.*
Increased innovation in drone technology has partly been driven by greater investment in defence R&D as well as an increasing range of uses for drones in the broader economy.
Manufacturers are rushing to corner as much of this rapidly growing market by registering patents to protect their R&D investments.
Developments in AI have also driven the substantial growth in drone inventions as companies look to integrate the two technologies .
Andrew White, partner at Mathys & Squire says: “There is now an almost universal acceptance that drones are going to be an important part of defence sector investment and defence companies, conventional drone companies and universities are all looking to out-innovate their competition in order to secure part of that market.”
“Innovations within the defence sector are also spilling over into the conventional drone sector – such as the use of AI to allow real-time data analysis, correction to navigation systems and object detection and avoidance.”
6,217 Chinese patents were granted last year relating to drone technology, accounting for 79% of all drone patents granted last year. This was up from 4,859 or 73% of all drone patents the year before.
Notable Chinese filers of drone patents include drone manufacturer DJI, who filed 64 patents in the last year alone. The state-backed People’s Liberation Army National University of Defence Technology also accounted for 73 patents in the last two years.
Russia also remained in the top 4 filers of drone patents (behind China, the US and South Korea), and were granted 239 patents last year, a 78% increase from the 134 patents granted the year before.
Commercial applications continue to drive growth in drone innovation
*Source: Patentscope data from the Information Commissioners’ Office (year-end December 31)
Mathys & Squire Partner Andrew White was recently featured in ‘Apple’s $502M License Bill May Draw SEP Owners To UK’ by Law360, providing commentary on the impact of the Optis v. Apple SEP decision on further SEP rulings in the UK, and even worldwide.
The article highlights how technology companies may avoid the UK for licensing disputes after Apple has been ordered to pay $502 million for a suite of 4G patents, an increase from the original order of $56 million, but might attract more SEP holders.
To read the full article click here.
