UKIPO’S New Practice – Bad Faith Objection on Broad Specification

By Abhay Nanda

A trademark prosecution practice that is followed by applicants in the IP Offices around the world is filing of trademark application with broad specification of goods or in some cases with class heading. Although few IP Offices, such as United States Patent & Trademark Office (USPTO), Canadian Intellectual Property Office (CIPO), European Union Intellectual Property Office (EUIPO), among a few others, take measures to curtail broad specification. These offices raise an objection to specification of goods if the same are found to be broad or vague.

Similarly, the United Kingdom Intellectual Property Office (UKIPO) has issued a new Practice Amendment Notice (PAN 1/25) regarding overly long or broad specification of goods and services. This notice is not issued suo moto. Rather, it has emanated from Supreme Court’s landmark ruling in the case of Skykick UK Ltd v Sky Ltd (2024 UKSC 36).

SKYKICK UK LTD V SKY LTD IN BRIEF

Eight years ago, Sky took action against Skykick alleging that Sky had infringed their registered trademarks by offering their services under the mark “SkyKick”. Skykick counterclaimed that Sky’s registered trademarks were wholly or partly invalid as Sky had

1. no genuine intention of using their mark in relation to all or majority of the goods and services for which they were registered and
2. the specifications of their trademark registrations lacked clarity and precisione. they were broad or vague.

The High Court found that Sky did not have any intention to use its mark in relation to all the goods and services it had specified and had no reasonable commercial rationale for seeking very broad specification. Referring a few questions to CJEU, it responded that

1. trade marks cannot be declared wholly or partially invalid on the ground that the terms used to designate the goods and services in respect of which that trade mark was registered lacked clarity and precision
2. “when the absence of the intention to use the trade mark in accordance with the essential functions of a trade mark concerns only certain goods or services referred to in the application for registration, that application constitutes bad faith only in so far as it relates to those goods or services”[2]

On the other hand, the Court of Appeal held that applying for a trademark registration without the intention to use it in relation to the goods or services designated under it does not amount to bad faith. It held that there will be bad faith when the following two conditions are fulfilled:

1. no intention to use the mark
2. intention to file the trademark for the purposes of undermining a third party’s interests OR to obtain registration for purposes other than those falling within the functions of a trade mark

On appeal by Skykick, the Supreme Court dealt with the question of what constitutes bad faith in trademark law and identified the following principles.

1. whether an application to register an EU trade mark was made in bad faith will be decided as per the date when the application for registration was made i.e. application date.
2. an application made in bad faith is an absolute ground of trademark invalidity which can be relied upon before the EUIPO or a counterclaim in infringement proceedings.
3. an application can be objected where the intention of the applicant is to undermine the interest of third parties or to obtain an exclusive right for purposes other than those falling within the functions of a trade mark.
4. the intention of the applicant is a subjective matter, but it must be capable of being established objectively by the competent administrative or judicial authorities having regard to the objective circumstances of the case.
5. The burden to prove that a trademark application was made in bad faith lies upon the party making the allegation.

UKIPO’S NEW PRACTICE AMENDMENT NOTICE 1/25

Subsequent to the Skykick UK Ltd vs Sky Ltd case, the UKIPO published PAN 1/25[3] dated June 27, 2025 laying down behaviour expected from trade mark applicants when filing specifications of goods and/or services as well as impact of the said judgment on practices followed by IPO trade mark examiners when examining new applications.

THINGS TO BE KEPT IN MIND WHILE FILING APPLICATION

1. Be cautious while designating a large number of goods and services across several classes.
2. Be cautious while designating broad terms for goods and services or using class headings.
3. Check whether broad terms truly reflect intended use or sub-categories would be more appropriate.
4. Ensure that the specification of goods and services are fair and reasonable in the context of their businesses and do not reflect a filing made in bad faith.
5. Be ready to explain commercial reasons if application is objected on the scope of specification of goods and services.

EXAMINATION PRACTICE & WHAT TO EXPECT

As per the current practice, the UKIPO Examiners do not routinely raise bad faith objection. However, the same is expected to change. Now the Examiners will assess whether the specification of goods and services are so evidently broad that a bad faith objection should be raised.

In case an objection is raised due to bad faith, as per the standard practice the Applicant will be given 2 months to submit their response by either giving an explanation on the commercial rationale for the goods/services concerned or restrict the goods or services to more appropriately reflect their commercial rational. If the Examiner is not satisfied with the response and upholds the objection, the applicant will have the opportunity to be heard and/or file an appeal.[4]

CONCLUSION

While PAN 1/25 is aimed at trademark applications, it is expected to have broader implications covering oppositions and cancellation actions as well since the parties can now file counterclaim on the grounds of bad faith.

As a result, the applicants are now likely to be conservative and mindful in filing specification of goods and services which will hopefully result in a clean trademark register where rights of proprietor are more specific, clear and reflective of their business activities.

As this PAN has no retrospective effect, the proprietors of existing registration are not required to limit their broad specification of goods. Further, UKIPO will also not take actions against them of its own accord. However, this PAN has opened avenues for interested parties to challenge existing registration on the basis of bad faith.

Since this is a new practice, it still needs to be seen how strictly the UKIPO will shape its practice around this PAN and what do the applicants do to justify their scope of application or registration.

[1] https://www.pinsentmasons.com/out-law/news/businesses-await-supreme-court-ruling-in-sky-v-skykick-case

[2] Case C‑371/18, the Court of Justice of the European Union.

[3] Available at

[4] https://www.gov.uk/government/news/guidance-for-trade-mark-applicants-following-judgment-in-skykick-v-sky