UKIPO issues guidance on SkyKick

Briefing

What has happened?

The UKIPO has issued specific guidance on how the SkyKick decision on broad specifications will be applied to the examination of trade mark filings.

In SkyKick, the Supreme Court held that overly broad specifications can, in certain circumstances, give rise to a finding that the application was filed in bad faith (more here).

The UKIPO has confirmed that it will now actively raise a bad faith objection to specifications that appear "so manifestly broad and self-evidently broad" that a bad faith objection should be raised. However, the specification will have to be very broad to attract such an objection.

Where objections are raised, applicants will be given the usual period of two months in which to respond. This response could be providing appropriate commercial rationale for the filing in an attempt to overcome the objection or restricting the specification to address the UKIPO's concerns.

In deciding whether an appropriate commercial rationale has been supplied the UKIPO will presumably apply the criteria set out in SkyKick.

Want to know more?

The UKIPO’s new approach means examiners will look more closely at applications spanning multiple classes or huge swathes of goods and services without a clear justification. If an examiner suspects bad faith due to an overly expansive specification, they may raise an objection. Applicants will be given a period of two months to provide an appropriate commercial rationale for the filing or to narrow their specification.

What the UKIPO will definitely object to:

broad lists of goods/services in all 45 classes

applications covering all goods in class 9

other very broad specifications on a case-by-case basis.

What the UKIPO says applicants should be cautious about filing:

Applications covering vast numbers of goods/services in large numbers of classes. This is particularly so when the terms used to describe the listed goods/services are themselves broad.

Applications covering 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 such as class 9. The same applies even more so where class headings are used across a multitude of different classes.

Applications containing general terminology such as computer software, pharmaceuticals, clothing etc. For some, 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. Having said this, the UKIPO has said that it won't, at this stage, automatically object to such broad terms. In other words, there would have to be something more, other than the use of broad terms, to merit an objection.

What does this mean for you?

Applicants should carefully consider their trade mark specifications with the UKIPO's guidance in mind. However, given that an objection will only be raised if the specification is exceptionally broad, this is unlikely to affect most applicants.

Nonetheless, applicants should exercise caution when incorporating red flags in their specifications such as overly broad terms (computer software, telecommunications, pharmaceuticals and clothing etc), class headings, long lists of goods/services, and goods/services in multiple classes. While some of these won't necessarily attract a UKIPO objection, it is likely that third parties will raise bad faith grounds in response to any attempt to enforce marks with such red flags.

While an application is only refused (or registration invalidated) for those goods/services for which bad faith is found (so the whole mark does not fall unless every item was filed in bad faith), brand owners will want to avoid costly and time-consuming side claims about bad faith which may detract from the main action.