UKIPO Introduces New Practice Amendment Notice (PAN 1/25) on Trade Mark Specifications

The United Kingdom Intellectual Property Office (UKIPO) has released a new Practice Amendment Notice (PAN 1/25), effective 30^th June 2025, which significantly alters the scope of examination of trade mark applications, and essentially, applications that may be deemed to included overly broad terms or extensive lists of goods and services.

This development aims to in the UKIPO words “clarify the behaviour expected of trade mark applicants” and ensure that the goods and/or services listed under trade mark applications when filed genuinely reflect an applicant’s “current and intended use plans for a trade mark“.

The implication of this new practice is that the UKIPO may now raise objections to trade mark applications on the grounds of bad faith in cases where examiners consider the goods and/or services to be  “unduly broad”  or “unduly long”.

What is “bad faith”?

Bad faith applies where it is apparent from relevant and consistent indicia that the trade mark owner has filed an application for registration of a mark dishonestly.

On a deeper level, dishonesty means the trade mark owner is seeking not to engage fairly in competition, but conversely, is purposely trying to undermine its competition in a manner inconsistent with honest practices and against the interests of third parties.

Yet to qualify as bad faith it is not necessary to even target a specific third party or parties, so long as it can be shown the trade mark owner has sought to acquire an exclusive right for purposes other than those falling within the functions of a trade mark, in particular, the essential function of indicating origin.

Background: The landmark “SkyKick” ruling

This pivotal change in UKIPO practice is a direct consequence of the Supreme Court’s landmark ruling in Skykick UK Ltd v Sky Ltd (2024 UKSC 36), delivered in late 2024.

The SkyKick decision heralds a significant shift in trade mark practice and has profoundly impacted the understanding of bad faith in trade mark specifications.

The case originated from an infringement lawsuit filed by Sky against SkyKick, where Sky asserted its broad trade mark registrations for “SKY” across various goods and services, including the broad term “computer software” and multiple other broad terms across a range of goods that they would conceivably have had no interest in commercially.

SkyKick counterclaimed, arguing that Sky’s marks were invalid due to their extreme breadth and that they were filed purposely and solely for enforcement purposes and without a genuine intention to use the marks in trade for all the goods and services covered.

The Supreme Court’s decision largely endorsed the High Court’s original approach, which found that Sky’s marks were partially invalid for bad faith, thereby lowering the bar for bad faith findings compared to the Court of Appeal’s higher threshold.

What this means in practice is that trade mark registrations protected for a very wide scope of goods and/or services will now have an inherent vulnerability and an interested party has a greater means at its disposal for applying to invalidate a trade mark registration on the ground of bad faith in so far as the wide ambit of protected goods and/or services.

To repel an invalidity attack, a registered proprietor would need to show that (at the date of filing) it had had a genuine intention to use the mark in so for as the goods and/or services protected.

The core principle established by the SkyKick ruling is that absent a satisfactory explanation of any commercial rationale behind the list of registered goods and/or services, a trade mark registration may on the grounds of bad faith be wholly or partially invalidated by a third party for being overly broad.

In short, if it can be shown the trade mark owner never had intention to use the mark for goods and/or services covered by the registration, whether conditionally or otherwise, then they must have filed in bad faith.

Key aspects of bad faith highlighted by the “SkyKick” decision:

Assessment date: Bad faith is assessed as of the date the trade mark application was filed.

Lack of intention to use:  a trade mark application made without any intention to use the trade mark in relation to broad goods and service terms covered by the registration constitutes bad faith if there is no “commercial rationale” for the application in light of the functions of a trade mark.

Subjective intention, objective evidence: the applicant’s intention is subjective but must be determined objectively based on “relevant, consistent and objective criteria”.

Red flags: the SkyKick case highlighted several “red flags” in the Sky specification that increased the risk of a bad faith finding. These included the use of very broad terms such as “computer software”, “telecommunications” and “pharmaceuticals” as well as long lists of goods/services that were apparently not connected to any Sky business.

Abuse of the system: bad faith can be established where the application constitutes an “abuse of the trade mark system”. This includes situations where an applicant seeks to obtain an exclusive right for purposes other than the core function of a trade mark (i.e., indicating origin)

Grace period misuse: The five-year grace period for use after registration, intended to give applicants time to develop their trade, can be abused if registrations are sought without genuine intention to use and in place merely to block or undermine the otherwise innocent and unobjectionable activities of third parties. Such registrations can deter other traders and obstruct their ability to register and use their own marks.

Partial invalidity: the Supreme Court affirmed that if bad faith applies only to certain goods or services under a contested registration, the invalidity will apply only to those goods and services.

Shifting burden: Typically, the burden of proving bad faith lies with the party that raises the allegation. However, where objective circumstances (such as the breadth of the specification versus the applicant business nature) rebut the presumption of good faith, it then becomes the burden of the proprietor of the mark to explain and provide a plausible explanation of the objectives and commercial logic pursued by the application for registration.  Failure to provide an adequate explanation will lead to the inference and provide further support for a finding of bad faith.

Principles and Guidance for Trade Mark Applicants – PAN 1/25

The new Practice Amendment Notice (PAN 1/25) directly applies the Supreme Court’s guidance to the examination of UK trade mark applications. Applicants are warned to be far more diligent and precise in their trade mark specifications so as not to trigger an allegation of bad faith at examination, leading to partial or total refusal.

The UKIPO has identified the following main criteria that may trigger bad faith objections in the course of examination:

• Filing in all 45 classes (or covering expansive ranges of goods and services in large numbers of classes)

• Filing for all goods in Class 9 (or overly broad goods within this class, for example “technology, science, information processing, software and related goods”)

• Using “class headings” (alphabetical list of goods/services)

The UKIPO has also cautioned against filing broad terms to describe goods and services and has provided examples such as “computer software” in Class 9, “pharmaceuticals” in Class 5 and “clothing” in Class 25. However, we are told objections will not automatically be raised where these terms are used within specifications, even though the UKIPO states that for some applicants these terms would be reasonable according to their business interests whereas for others they may not be.

What does this mean for trade mark owners?

This new practice does mark a seismic shift in practice, but there should be no panic.

It will be interesting to see how strictly the UKIPO apply the new criteria and how far examiners are willing to go if they suspect an element of bad faith within a trade mark specification.

Clearly, practitioners should avoid filing across a multiple number of classes covering a vast range of goods and services, using class headings (the full alphabetical list) and for some classes (where appropriate) making sure not to cover all goods in a class.

So long as these points are noted and the main pitfalls avoided there should be no issues at examination, although it is open to third parties to challenge the breadth of a specification pre- or post-registration on the grounds of bad faith if they are so minded and have the commercial incentive to do so.

If an objection is raised at examination on the grounds of bad faith, an applicant will be set a period of two months to explain its commercial reasoning for filing the broad term(s) under dispute. In the event an objection is maintained the applicant would then have the right to request a hearing.

To avoid any issues as best as possible, trade mark owners should:

• Accurately reflect their plans by ensuring goods and/or services covered by their mark mirrors that of their business intentions, or at least their probable future business intentions

• Qualify broad terms: if a business produces accounting software and specialises in that area (with no foreseeable expansion) then it is advisable to protect their mark for “accounting software” rather than the broad term “computer software”

• Document their business plans, including future intentions and where their business could be heading in the next few years. Any goods/services within the scope of future plans may be salvageable if it can be demonstrated that such terms were filed at the outset in good faith.

The emphasis is now firmly on ensuring that trade mark specifications accurately reflect the applicant’s real-world business activities and future plans. It seems that sooner or later a practice of this nature had to come into effect in the UK because, unlike other jurisdictions such as the US, the maintenance and renewal of a UK trade mark registration is not dependent on its commercial use and the view now is that the system has been abused for far too long.