The UKIPO has published a new Practice Amendment Notice (PAN 1/25) to clarify the behaviour expected of trade mark applicants when specifying goods and services in trade mark applications.
This PAN has been issued following the Supreme Court judgment in SkyKick UK Ltd and another v Sky Ltd and others (SkyKick). As reported here, the Supreme Court issued its long anticipated decision in the SkyKick case clarifying and providing guidance on circumstances which may amount to bad faith filings of trade mark applications. The judgment clarified, inter alia, that depending on the circumstances of the case in hand, the excessive breadth of the specification (or use of overly broad terminology) could lead to an inference of bad faith.
PAN 1/25 addresses this judgment’s impact on UKIPO trade mark examination practice.
Bad faith objections against overly broad specifications
Previously, the UKIPO has not generally raised bad faith objections against overly broad specifications of goods and services in applications. This is now set to change.
The PAN states that when examining applications the UKIPO will now consider, 'whether the specification is so manifestly and self-evidently broad that a bad faith objection should be raised.” The PAN does not prescribe any exact circumstances that will amount to a bad faith filing, acknowledging that for some applicants, the use of broad terminology (e.g. software or pharmaceuticals) may represent a good faith and reasonable claim, whilst for others it will not. This will depend on the nature of the applicant’s business. A broad term may include within its scope sub-categories for which the applicant has an intention to use the trade mark. It may also include sub-categories for which there is no intention to use. The key is the intention of the applicant to use the trade mark in relation to the applied for goods/services, and the use of appropriate terms to reflect that intended use.
UKIPO guidance to applicants
The PAN gives guidance on situations where particular caution must be exercised and which may indicate bad faith:
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Claims covering vast numbers of goods and services in large numbers of classes.
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The terms used to describe the listed goods/services are themselves broad.
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Use of class headings (especially for classes which cover a huge range of different (and disparate) goods/services, such as Class 9).
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Selection of general terminology such as computer software, pharmaceuticals, clothing etc. (however, the PAN clarifies that the IPO will not at this stage automatically object to broad terms such as computer software or clothing).
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The IPO will automatically raise an objection against a specification covering broad lists of goods/services in all 45 classes, or covering all goods in Class 9.
If a bad faith objection is raised, the applicant will have the opportunity to respond by either providing an explanation as to the appropriateness of the specification and the commercial rationale, and/or limit the goods/services in the specification to more appropriately reflect the commercial rationale and intended use.
Impact on filing practice and enforcement - takeaways
When filing new applications, a more cautious approach should be taken regarding the breadth of the specification and terms within the specification. There appears to be a slight shift towards a system similar to e.g. the US system (requiring the specification of a narrower and more precise description of goods and services) and away from the EU practice (which allows broad wording). However, broad terms may still be appropriate and acceptable in some circumstances, and the commercial rationale behind the filing should be carefully considered before filing.
Whilst the PAN’s primary focus is on examination practice, there will also be an impact on enforcement and on contentious matters. Opponents and cancellation applicants relying on broad specifications may find themselves faced with counterclaims on bad faith. The potential of a bad faith counterclaim should be considered when deciding on which goods/services to base an action.
If you have any questions relating to this topic, please get in touch with Nora Fowler, or your usual Kilburn & Strode advisor.