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BREAKING: SkyKick v Sky – UK Intellectual Property Office (IPO) practice update

Following the SkyKick v. Sky decision – which we covered in an earlier article – the key takeaway was that there will now be a careful balance to strike between a sufficiently broad specification that adequately covers an applicant’s commercial interests and not inviting unnecessary bad faith attacks. At the time, the UK Intellectual Property Office (UKIPO) was considering the decision and whether any changes of policy were needed. Last week, the UKIPO released practical guidance on when the filing of broad specifications may constitute an act of bad faith, and how UKIPO examiners have been empowered to deal with that issue going forward.

Key Takeaways

  1. There is an increased likelihood of UKIPO examination reports querying the intention behind the broad goods and/or services covered by trade mark applications.
  2. When examining trade mark applications, UKIPO examiners will now consider whether the specification of goods and/or services is so “manifestly and self-evidently broad” that a bad faith objection should be raised.
  3. If a bad faith objection is raised, applicants will have two months to respond by either:
  • Providing an explanation of their commercial logic for the broad specification of goods and/or services;
  • Restricting the goods and/or services to reflect their business more appropriately.

Going forward, to minimise the risk of bad faith objections, applicants should:

  • Take care to ensure that their trade mark applications cover only those goods and/or services that accurately reflect their business’s current or intended activities;
  • Be prepared to explain the commercial logic behind the goods and/or services they have covered in their trade mark applications.

Further details

Genuine Intention to Use

  • UKIPO examiners have been empowered to challenge broad goods and/or services lacking clear commercial logic or genuine intent to use.
  • Applicants are advised to exercise caution when seeking trade mark protection across an extensive range of goods and/or services in multiple classes.

Increased Clarity & Precision in Specifications

  • Specifications must explicitly reflect intended commercial use. Ambiguous, overly broad, or speculative terms may trigger bad faith objections.
  • Certain trade mark applications will automatically trigger objections, such as covering broad lists of goods/services in all 45 classes or a claim covering all goods in Class 9.
  • It is difficult to prescribe the exact circumstances when a UKIPO examiner will intervene in other cases, but some terms are likely to be heavily scrutinised going forward, such as: “Computer software” (without specifying purpose) and “Financial services” (without detailing specific activities).

Commercial Logic

  • Applicants should ideally prepare and maintain records or business plans substantiating appropriate commercial rationale for the broad goods and/or services concerned.
  • Applicants (and their trade mark attorneys, if applicable) should consider whether broad terms like “Computer software” or “Financial services” are a fair reflection of their business. If not, more specific terms should be used instead.

If you would like to continue the conversation, please contact one of the authors – Craig Beaumont or Jacob Larking – or your usual Barker Brettell trade mark attorney.

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