New Guidance for Trade Mark Applicants Following SkyKick Decision

The UK Intellectual Property Office (UKIPO) has released updated guidance for trade mark applicants following the UK Supreme Court’s judgment in SkyKick UK Ltd and another v Sky Ltd and others. The ruling clarifies when trade mark applications may constitute “bad faith”, particularly when they include overly broad specifications.

The UKIPO’s updated Practice Amendment Notice (PAN 1/25) takes effect immediately from publication of the PAN (27 June 2025) and outlines much stricter standards for examination of trade mark applications. Examiners will now actively assess whether specifications are “manifestly and self-evidently broad” and may raise objections on bad faith grounds at the examination stage.

Key Takeaways for Applicants

Applicants should ensure their trade mark specifications accurately reflect their genuine business intentions or reasonable future business intentions. Specifically, they should:

• Avoid making unnecessary claims across multiple or all 45 classes of goods and services.
• Assess whether broad terms like “computer software” or “clothing” are suitable, or if more precise sub-categories are appropriate.
• Be ready to provide a commercial rationale for their chosen specification if challenged and maintain evidence for decisions made for new trade mark filings for the same trade mark in the same classes.

The UKIPO warns that applications covering all goods in a class (such as all items in Class 9) or spanning every class will automatically raise red flags. However, each application will be reviewed on its own merits, with a practical approach to identifying unjustifiably broad specifications.

What Happens If You’re Challenged

If an examiner raises a bad faith objection, applicants will have two months to respond. Applicants can:

• Provide a credible commercial justification for the broad specification filed.
• Amend the specification to more closely align with genuine business plans.

Why It Matters

The Supreme Court held that filing trade mark applications without a genuine intention to use the mark, especially on a wide scale for broad goods or services, can undermine the trade mark system. It can unfairly block market access for other businesses and amount to misuse of the trade mark system, even if there is no malicious intent.

This change signals a shift in the UK trade mark examination practice and reinforces the importance of fair and honest, business-driven trade mark filings.

If you require assistance with a trade mark application or have received a bad faith notice from the UKIPO, please contact us for support.

Written by Cheryl Payne and Lauren Mills for ip21

July 2025