The UK Intellectual Property Office has issued a Practice Amendment Notice (PAN 1/25) providing guidance on trade mark specifications following the Supreme Court’s judgment in Sky v SkyKick. The guidance clarifies the approach applicants should take when drafting trade mark specifications, and the judgment's impact on examination of new trade mark applications. It takes effect immediately.
Going forward, UKIPO Examiners will consider whether a specification is "manifestly and self-evidently broad" and will routinely raise a bad faith objection if it is deemed overly broad. There will not, however, be a complete ban on broad terms such as "computer software" or "pharmaceuticals".
Supreme Court's judgment in Sky v SkyKick
The central issue in the Supreme Court's judgment in SkyKick was whether (and in what circumstances) a trade mark registration could be invalidated on the basis of bad faith if the applicant had no intention of using the mark for all of the goods or services for which it sought protection. Our article summarising the decision and its impact can be seen here: Sky v SkyKick: implications of Supreme Court decision for trade mark practice.
UKIPO PAN 1/25
There had been considerable speculation as to how the UKIPO would respond to the Supreme Court's judgment. Indeed, there had been some concern that it might impose an outright ban on terms such as "computer software", "pharmaceuticals" and "clothing". However, it has adopted a pragmatic approach that acknowledges that, whilst broad terms can be problematic in some cases, they are not necessarily inherently so.
From now on, UKIPO Examiners will routinely raise bad faith objections against overly broad specifications where the specification is "manifestly and self-evidently broad". The guidance acknowledges that it is not feasible to prescribe the exact circumstances in which an objection will be raised. Nevertheless, it confirms that an automatic objection will always be issued where an application covers a broad list of goods and services in all 45 classes, or all goods in class 9 (a class which covers a broad range of goods relating to technology and related products).
However, Examiners will not, at this stage, automatically object to broad terms such as "computer software" or "clothing", but applicants should assess carefully what is appropriate for their intended use, as applying for coverage in a subcategory may be more suitable.
The UKIPO advises trade mark applicants to:
- satisfy themselves that they are acting in good faith (a filing is unlikely to be in good faith if there is no intention to use the mark for the applied coverage);
- apply for goods and services which represent "fair and reasonable claims" in the context of their business; and
- exercise caution when applying for:
- a large number of goods and services across many classes;
- broad terms and general terminology such as "computer software", "pharmaceuticals" and "clothing" (these terms may be reasonable where they truly reflect the intended use, but not in other cases); or
- class headings.
If the UKIPO raises an objection, applicants will have two months to respond. To seek to overcome the objection, they can either provide an explanation of their commercial rationale or can adjust the coverage to better reflect their commercial rationale.
Comment
The guidance serves as a reminder to trade mark applicants of the importance of having a commercial rationale, at the time of application, for the scope of protection sought. Even if an application for broad coverage passes the examination stage, there remains a risk of a bad faith challenge from a third party.
Mishcon de Reya acted for Sky in the Sky v SkyKick proceedings