UKIPO releases new guidance for trade mark applicant’s following decision in Skykick v Sky case

The United Kingdom Intellectual Property Office (UKIPO) has issued new guidance for trade mark applicants following a Supreme Court judgment in the case of SkyKick UK Ltd and another v Sky Ltd and others. These new changes will take immediate effect highlighting the importance of familiarising yourself with the new guidance. You can access the practice amendments notice (PAN) which clarifies what is expected when filing specifications, and outlines changes to examination practices, here.

As a brief recap – the crux of the Skykick v Sky case was the fact that Skykick argued Sky had registered trade marks in bad faith given the widespread protection afforded to the registrations.  Such protections were afforded to a range of unrelated goods and services which were not a part of the core business of Sky.  Skykick claimed that Sky never had a genuine use to use those specific goods/services and therefore, this raised the question as to whether the registration was made in bad faith.   The Supreme Court judgment addressed bad faith in trade mark applications, particularly concerning overly broad specifications where applicants have no genuine intention to use the mark across all the claimed goods or services. The UKIPO has released its new guidance to assist applicants, in light of this case and the impact this Judgment will have on UK law.

Important changes trade mark applicants and their representatives need to know

According to the guidance prepared by the UKIPO, the examiners will now consider whether specifications covering goods and services are “manifestly and self-evidently broad”, and may raise bad faith objections during the examination process.

The UKIPO has provided helpful guidance to assist applicants, as follows:

• Trade mark applicants should:
• ensure specifications represent fair and reasonable claims for their business
• be cautious when filing for large numbers of goods and services across multiple classes
• consider whether broad terms like “computer software” or “clothing” truly reflect intended use, or whether sub-categories are more appropriate
• be ready to explain their commercial reasons if challenged on the scope of an application

Given that UKIPO examiners will actively consider whether specifications are now “manifestly and self evidently broad”, what are you to do if you receive this response?

If an examiner raises a bad faith objection to your application, much like in other office actions raised, the applicant will have two months to respond to the examiner by either:

• providing an explanation of their commercial reasons for the broad specification

or

• restricting the goods/services to reflect their business more appropriately

It is the UKIPO’s aim is to strike a pragmatic balance between what applications are consider to be too broad, and as explained, the focus will be on whether a specification is manifestly and self-evidently broad.

If you need assistance in protecting your business name, please don’t hesitate to contact one of our specialist intellectual property lawyers who will be able to assist.