The UKIPO recently published a Practice Amendment Notice (PAN 1/25) which provides guidance on how the Supreme Court’s Judgment in Sky v SkyKick will impact UKIPO examination practice. In particular, in relation to the behaviour expected of applicants and the circumstances in which bad faith objections might be raised in connection with the specification of goods and services applied for.
Background
In brief, and by way of background, Sky Ltd brought a trade mark infringement action against SkyKick UK Ltd and relied on various earlier rights which covered very broad specifications. SkyKick retaliated by filing invalidity actions against certain trade mark registrations owned by Sky Ltd on grounds of bad faith.
The case was eventually appealed up to the Supreme Court which essentially found that a trade mark proprietor may be held to have acted in bad faith and its registrations declared invalid where it has applied for protection of a mark for goods and services for which it has no intention to use its mark as a badge of origin. Our commentary on that case can be found here.
Behaviour expected of trade mark applicants
The PAN reproduces key sections of the Supreme Court’s Judgment that underpin this change in examination practice and sets out the behaviours expected of applicants when applying to register trade marks.
Applicants are expected to:
- Act in good faith in relation to all goods and services applied for, including in relation to broad terms that cover multiple sub-categories.
- Seek protection for goods and services which fairly and reasonably reflect their business for the purposes of identifying trade origin. A one size fits all approach will not be applied, so behaviour that might be acceptable for one business (and be considered good faith) might not be acceptable for another.
Nature of the business and the proprietor’s motivation
The nature of the business concerned and the motivation behind the filing are important factors to consider when assessing whether an application has been filed in bad faith.
It is clear from this PAN that extra care must be taken to avoid filing applications that cover:
- a vast range of goods and services in a large number of classes.
- broad terms covering a multitude of sub-categories e.g. computer software, pharmaceuticals, clothing
- class headings, especially those that cover a range of unconnected goods and services.
In all cases, applicants need to ask themselves whether the goods and services applied for are a true reflection of their business/business plans. It is worth bearing in mind that applicants are not required to provide evidence of a concrete business plan in relation to the goods and services applied for, nor are they required to have an existing business. The Sky v SkyKick Judgment, however, makes it clear that ‘it may be problematic if there is no intention to use the grace period to establish, or explore the viability, of a relevant business’.
UKIPO examination practice moving forward
If a specification appears to be manifestly and self-evidently broad, a bad faith objection will be raised. Whilst there are no set circumstances when this might apply, an objection will always be raised when an application covers a broad range of goods and services in all 45 classes or covers all goods in one class. Interestingly, Examiners will not automatically object to broad terms such as ‘computer software’ or ‘clothing’, at least not at this stage. However, applicants are encouraged to select terms that are appropriate for their intended use.
What will happen if a bad faith objection is raised?
Applicants will have two months to respond to a bad faith objection relating to their specification either by explaining the commercial rationale behind their specification (and why it is justified) and/or applying to limit their specification to one that aligns with their commercial objectives.
Comment
The content of this PAN is not surprising given the Sky v SkyKick Judgement. Applicants are now more likely to take a more conservative and considered approach when preparing trade mark specifications of goods and services. This is a welcome consequence and will hopefully result in a Register where rights are more tailored and reflective of a proprietor’s activities and where registrations have clearer and fairer scopes of protection.
In time, this might also make the challenge of clearance searches slightly easier, but as there is no retrospective requirement for proprietors of existing registrations to amend their specifications in line with this guidance, the UK Register will likely remain cluttered in sectors in which proprietors have no real interest in using their mark.
It seems unlikely that the UKIPO will of its own accord undertake a detailed examination of an applicant’s business to determine whether the specification applied for is commercially justified; it is only those specifications that are blatantly and obviously wide that will face a bad faith objection at the examination stage.
It is worth noting that even if an application with an overly wide specification sails through examination, it would not be immune from subsequent opposition or invalidation on grounds of bad faith.
It remains to be seen whether the evidential burden of proving an intention to use at the time of filing (e.g. in the context of an invalidation action on grounds of bad faith) will be higher in the case where a mark has been registered for a long period of time without any evidence of use or plans to use the mark in relation to the goods and service concerned.
The PAN warns potential opponents and cancellation applicants of retaliatory actions on grounds of bad faith where they are relying on earlier registrations that contain broad terms. That said, bad faith must have existed at the time such rights were applied for. Consequently, it might be harder to establish bad faith in cases where registration was achieved before this PAN came into effect.
Time will tell as to how stringently or widely the UKIPO will apply or adapt this PAN and the lengths to which applicants will need to go to justify the extent to which their specifications reflect their legitimate commercial objectives.
If you would like to discuss this matter in more detail, please do not hesitate to get in touch with your usual contacts at CSY or via mail@csy-ip.com.