UK Intellectual Property Office offers guidance on SkyKick patent matters
The UK Intellectual Property Office (UKIPO) has announced a new approach towards trade mark filings with overly broad specifications, following the Supreme Court's judgment in Sky v SkyKick. This change is outlined in the Practice Amendment Notice (PAN 1/25).
Under the new approach, UKIPO examiners will proactively assess trade mark applications for potential bad faith, particularly focusing on specifications that are "manifestly and self-evidently broad." Applicants may face objections if their specifications are deemed too broad without a clear commercial justification. This includes very long lists of goods or services or lacking obvious commercial reasoning for the breadth of the application.
Applicants have two months to respond to objections by either providing a commercial explanation for the scope of goods or services claimed or amending the specification to address the examiner's concerns.
To avoid potential bad faith claims, brand owners are advised to avoid using overly broad terms, class headings, long lists of goods/services, and goods/services in multiple classes. Filing in all classes or claiming all goods in a class triggers an objection, as it is seen as overly broad. Broad descriptions without justification, such as "computer software" or "pharmaceuticals," may come under scrutiny if there is no clear commercial justification for their inclusion.
In deciding whether an appropriate commercial rationale has been supplied, the UKIPO will apply the criteria set out in the SkyKick decision. The specification must be very broad to attract a bad faith objection from the UKIPO. The office will actively raise a bad faith objection to specifications that are "so manifestly broad and self-evidently broad."
Third parties may also raise bad faith grounds in response to any attempt to enforce marks with such red flags, which can lead to costly and time-consuming side claims. Therefore, brand owners should carefully consider the specifications of their marks prior to relying on them in any action.
The UKIPO's new approach means examiners will look more closely at broad trade mark applications, particularly those spanning multiple classes or large sections of goods and services without a clear justification. This change aims to ensure that trade mark applications accurately reflect the business needs of the applicant and do not unjustifiably encroach on the rights of others.
In the context of the UKIPO's revised approach towards trade mark filings, it's essential for applicants to provide a commercial explanation for broad specifications, as overly broad terms, class headings, long lists of goods/services, and goods/services in multiple classes may trigger objections due to potential bad faith claims. Failure to justify the breadth of the application may lead to scrutiny and side claims from third parties, which can be costly and time-consuming. Hence, brand owners are advised to carefully consider the specifications of their marks before relying on them in any action to ensure they accurately reflect the business needs and do not unjustifiably encroach on the rights of others in the communications, finance, and business industries.
