Statutory guidance

PAN 1/25: Required behaviour, and the impact on examination practice, following the Supreme Court’s judgment in SkyKick UK Ltd and another v Sky Ltd and others

Published 27 June 2025

Required behaviour, and the impact on examination practice, following the Supreme Court’s judgment in SkyKick UK Ltd and another v Sky Ltd and others

Purpose of this PAN

1. On 3 December 2024, the Supreme Court issued its judgment in SkyKick UK Ltd and another v Sky Ltd and others (SkyKick). The purpose of this PAN is to clarify the behaviour expected of trade mark applicants when filing specifications of goods and/or services. The PAN also sets out the impact of the judgment on the practices followed by IPO trade mark examiners when examining new applications.

Background

2. Section 3(6) of the Trade Mark Act 1994 prohibits registration of a trade mark “…if or to the extent that the application is made in bad faith”. The SkyKick judgment sets out a number of principles relating to the interpretation of the bad faith provision. The judgment provides guidance on whether a bad faith finding can stem from an overly broad specification of goods and services, or an overly broad term within it. This may be the case where the applicant had no intention to use the trade mark to the extent claimed.

Basic principles

3. Paragraphs 3-7 of the judgment highlights that there are benefits in not requiring an applicant to have used a trade mark prior to filing. However, such a regime is open to abuse. This could be by way of filing for goods and services for purposes other than indicating trade origin. This may be intentional, in order to obtain a legal weapon to block or undermine the innocent and unobjectionable activities of third parties. This could create barriers for other traders who wish to enter the market, the choice of marks for adoption being diminished. Furthermore, during the 5-year grace period, its owner can prevent the use of other marks including in relation to goods/services they had no intention to provide.

4. As set out in paragraph 153 of the judgment, the essence of a bad faith claim may be understood as:

“…that the motive or intention of the applicant was to engage in conduct that departed from accepted principles of ethical behaviour of honest commercial practices having regard to the purposes of the trade mark system.”

5. The judgment recognises that an applicant is not required to have a settled or developed intention to trade under the claimed goods and services. Nor are they required to have an existing business. However, it may be problematic if there is no intention to use the grace period to establish, or explore the viability, of a relevant business.

6. What has been said above can be rebutted by a satisfactory explanation of an appropriate commercial rationale for making the application for the goods/services concerned. However, failure to provide a satisfactory explanation may support a finding of bad faith.

7. The judgment goes on to discuss the capacity for a bad faith finding to be made where there is no prospect of use. The relevant paragraphs of the judgment read:

“251. Here I am persuaded by the reasoning in the decisions of the CJEU to which I have referred that for a person to make an application to register a mark for goods and services for some purpose which is not contemplated by the legislation and in relation to which that person had no intention (conditional or otherwise) to use the mark as a badge of origin constitutes an abuse – that is to say, a misuse of the system.”
“253. This proposition may be tested by taking an example provided by counsel for the Comptroller-General, namely a person who applies to register a mark in respect of everything in all 45 classes of goods and services. Here the width and size of the specification would, absent a satisfactory explanation, justify a finding of abuse on the basis that the applicant had intentionally taken advantage of the rules by creating artificially the conditions laid down for obtaining a registration with unduly wide protection:”
“254. Once that proposition is established, as I think it is, then it must be a matter of degree whether the objective circumstances, that is to say, the width and size of the specification of goods and services and their nature, as compared to the size and nature of the applicant’s business (or lack of it) are such as to rebut the presumption of good faith and so justify the conclusion that the application was filed, at least in part, for a purpose other than in connection with the proper functions of a trade mark, that is to say to denote the origin of the goods or services to which it is applied.”
“256. Accordingly, in my view, the question in any such case is whether, absent an explanation and rationale consistent with the functions of a trade mark, it is reasonable to infer from the size and nature of the list of goods and services the subject of the application and all the other circumstances, including the size and nature of the applicant’s business, that the application constituted, in whole or part, an abuse of the system and was for that reason made in bad faith.”

8. The judgment also focuses on the use of broad general terms. A general term may include within its scope sub-categories for which the applicant has an intention to use. However, it may also include distinct sub-categories for which no such intention exists. The judgment states this:

“261. First, there can be no doubt that an application to register a mark in respect of a broad category of goods or services may be made partly in bad faith in so far as the broad description includes distinct subcategories of goods or services in relation to which the applicant never had any intention to use the mark, whether conditionally or otherwise”

Behaviour expected of trade mark applicants

9. Applicants who wish to use the trade mark system should be acting in good faith when doing so. They should be using the regime for the manner and purpose for which it is intended. It is, in the first instance, for applicants to satisfy themselves that they are acting in good faith. Given the Supreme Court’s guidance, a good faith filing will likely not be achieved by filing without an intention to use. That also applies to the use of general terms covering multitude of sub-categories, where intended use covers only one (or some) of those sub-categories.

10. Applicants should seek registration for goods/services which represent fair and reasonable claims in the context of their businesses, for the purpose of denoting trade origin. It is not possible to precisely prescribe what will constitute bad faith when it comes to the provision of a trade mark specification. That will depend on the individual nature of the applicant’s business and their motivations for filing for the goods and services concerned. It is possible for the same specification to constitute a good faith filing for one applicant, but bad faith for another.

11. Notwithstanding the difficulty mentioned in the previous paragraph, the following information highlights when applicants should exercise particular caution/care. Applicants should be cautious about filing claims covering vast numbers of goods and services in large numbers of classes. Caution should also be applied when the terms used to describe the listed goods/services are themselves broad. They should also be mindful about the use of class headings. Applicants should carefully consider whether the words used in a class heading truly represent a good faith filing for their business. This is particularly (but not exclusively) so for classes which cover a huge range of different (and disparate) goods/services. For example, class 9, which covers goods as different as “breathing apparatus for underwater swimming” and “apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity”. The same applies even more so where class headings are used across a multitude of different classes. Caution and due consideration should likewise apply to the selection of general terminology such as computer software, pharmaceuticals, clothing etc. For some applicants, the use of such terminology may represent a good faith and reasonable claim. For others it will not, and the selection of sub-categories may be more appropriate to reflect their intended use.

Impact on practice applied by Trade Mark Examiners

12. As a matter of current practice, our Examiners do not routinely raise bad faith objections against overly broad specifications. This will now change.

13. When examining applications (including international registrations designating the UK) Examiners will consider whether the specification is so manifestly and self-evidently broad that a bad faith objection should be raised. Given the various factors involved, it is not possible to prescribe the exact circumstances when an Examiner will intervene in this way.

14. It should not be taken that an apparent failure to adhere to the considerations in paragraph 11 will automatically result in an objection. Examiners will take account of these factors, but it will be a matter of fact and degree in each case. There will be some cases where Examiners will always raise an objection. For example, a claim covering broad lists of goods/services in all 45 classes, or a claim covering all goods in class 9. However, these should not be taken as the only circumstances in which an objection will be raised. For clarity, IPO examiners will not at this stage automatically object to broad terms such as computer software or clothing. But, as paragraph 11 states, applicants should carefully consider what is appropriate for their intended use, which might mean that a sub category is more appropriate.

15. If an objection is raised by an Examiner, the applicant will be given an opportunity to provide an explanation of an appropriate commercial rationale for the goods/services concerned. They may also elect to restrict the goods/services to a specification that more appropriately reflects the commercial rational. As per standard practice, a period of two months will be permitted for a response. If the Examiner is not persuaded to waive the objection, the applicant will retain the opportunity to be heard and/or to appeal.

16. This notice focuses primarily on examination practice. However, opponents and cancellation applicants involved in proceedings before the IPO’s Tribunal should also take note of the guidance at paragraphs 11-13 above. Relying on broad specifications may lead to counterclaims on bad faith grounds. Claimants are reminded they should base their case only on the terms they are content to defend against a potential counterclaim on bad faith grounds.

17. This approach will come into force with immediate effect. The IPO will also monitor the impact that this PAN has on the number of broad claims being filed.