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.
