Following the Supreme Court’s Sky v SkyKick judgment, the UKIPO has published a Practice Amendment Notice (PAN 1/25), which clarifies the “behaviour expected of applicants when filing specifications of goods and/or services” and addresses the impact of the judgment on the UKIPO’s practice when examining new applications.
PAN 1/25 was published on 27 June 2025 and has come into force with immediate effect. You can read PAN 1/25 here.
How does the UKIPO’s guidance impact trade mark applicants?
PAN 1/25 addresses the question of bad faith applications and states that applicants must act in good faith when filing trade mark applications. For many years now the UK trade mark application form has included a declaration that is signed by or on behalf of the applicant that states that “the trade mark is being used by the applicant, or with his or her consent, in relation to the goods or services shown, or there is a bona fide [good faith] intention that it will be used in that way”. Ultimately, the specification applied for should genuinely reflect the business interests of the applicant.
The UKIPO has highlighted that applicants should exercise caution and care in the following situations:
- When covering a considerable number of goods/services over a large number of class headings;
- When covering class headings. This is particularly the case for class headings that include a broad range of goods/services, including, for example, class 09, which covers goods such as “clothing for protection against injury, accident, irradiation or fire” and “data processing equipment and computers”; and
- When including broad terminology within specifications that do not accurately reflect the intended use of the trade mark, such as, possibly “computer software” and “clothing”.
How has the UKIPO’s practice changed?
The UKIPO will now examine broad specifications covered by new trade mark filings to determine whether a bad faith objection should be raised. If an objection is raised, the applicant will have two months to provide an explanation as to why the goods/services concerned have been applied for. The UKIPO may also choose to limit specification to reflect the commercial rationale more accurately for the goods/services concerned.
If, however, the examiner is not convinced by the information supplied, the applicant will still have the opportunity to be heard or to appeal the decision.
It should be noted that the UKIPO does not exercise a one-size-fits-all approach when it comes to determining whether a bad faith objection should be raised, and, instead, it is a “matter of degree for each case”. That being said, the UKIPO has confirmed that an objection will be raised when applicants (i) claim a broad list of goods/services in all 45 classes and (ii) claim all goods in class 09. It also confirmed that they will not object to broad terms such as “computer software” and “clothing”, but they encourage applicants to use sub-categories where appropriate.
How does the UKIPO’s guidance apply to cancellation/opposition proceedings?
The UKIPO has advised claimants to only pursue claims in relation to the goods/services that they will be prepared to defend against any counterclaims of bad faith.
Summing up
PAN 1/25 emphasises that applicants should act with caution when filing trade mark applications and ensure that the specification covered accurately reflects their business interests to avoid any potential bad faith objections.
If you would like any further advice in relation to this guidance, please contact your usual Forresters attorney.
