The UK Intellectual Property Office (UK IPO) has issued a highly anticipated Practice Amendment Notice 1/25 (PAN 1/25) in response to the decision of the UK Supreme Court in SkyKick UK Ltd & another v Sky Ltd & others [2024] UKSC 36 (SkyKick), which was handed down in December 2024.
PAN 1/25 has immediate effect (27 June 2025). It clarifies “the behaviour expected of trade mark applicants” when determining the descriptions of goods and services to be used in a trade mark application and sets out a new examination practice for trade mark applications, particularly where the UK IPO believes the specification has overly broad or vague specifications of goods and services.
What happened in SkyKick?
A number of issues were addressed in this long-running case. For present purposes, the Supreme Court in SkyKick reaffirmed that applications to register trade marks made in circumstances where there is no genuine intention to use that mark for the goods or services applied-for may constitute bad faith under section 3(6) of the Trade Marks Act 1994. Where there is a lack of an intention on the part of the applicant to use the mark for some goods and services but not others, the trade mark will only be open to bad faith challenge to that extent. The Supreme Court considered in particular that a bad faith finding could stem from a claim to an overly broad specification of goods and services, or an overly broad term within a specification, under certain conditions.
What has changed with the new guidance in PAN 1/25?
Prior to PAN 1/25, bad faith challenges for over-breadth were not routinely raised by examiners during the examination of new applications. Following PAN 1/25, the UK IPO intends to take a more interventionist approach, to curb filings which may be deemed speculative or overly defensive and consequently a potential misuse of the trade mark system.
How will PAN 1/25 impact new UK trade mark applications?
Under PAN 1/25:
- UK IPO examiners will now proactively assess specifications of goods and services for potential bad faith at the examination stage.
- Applicants may face objections if specifications are very long, or deemed “manifestly and self-evidently broad”, particularly where the examiners see no obvious commercial justification for having included certain goods or services in an application.
- Certain broad descriptions which were previously unproblematic, for example “computer software”, “clothing” and “pharmaceuticals”, are still permissible, but risk coming under greater scrutiny by the examiners.
- Certain practices, such as filing in all 45 classes, or claiming all goods in Class 9, will automatically receive an objection.
- It is expected that the vast majority of filings will not be affected. If an application does receive an objection, then Applicants will have the opportunity to respond to any PAN 1/25 objections raised during examination in the usual way, with a two-month deadline. Applicants can, for example, provide a commercial explanation for the scope of goods or services claimed; or simply delete the terms queried by the examiners.
Recommendations
- As before, Applicants should only seek registration for goods and services that they can genuinely assert that they intend to use, which represent “fair and reasonable claims in the context of their business”. Applicants are expected to satisfy themselves that they are acting in good faith at the time of filing any new trade mark applications.
- It is recommended that Applicants work closely with internal stakeholders to verify and document current and future commercial plans, particularly for goods and services which could appear speculative or overly broad at first glance, in order to have a ready defence to a possible examiner’s objection. If the specification of goods and services can be shown to reflect actual or reasonably anticipated use under the mark concerned, then that should be acceptable to the UK IPO.
- Be wary of simply recycling without review specifications used for prior applications.
- Consider staggered or phased filings, if appropriate, to support future expansion or diversification, rather than relying on one very broad trade mark application at the outset.
In conclusion
The UK IPO’s aim of preventing bad faith filings is a worthy one and it has long been the case that any new UK trade mark application must include a declaration that the trade mark is being used by the applicant or with its consent in relation to the claimed goods or services, or that there is a bona fide intention that it will be used in this way. This has not changed.
However PAN 1/25 marks a significant change in the way that UK trade marks will be examined going forward, seeking to discourage abuse of the system. The UK IPO will be closely monitoring its new practice, to see if its frequency of intervention gets the balance right, between reducing overbroad filings and increasing the burden on legitimate but ambitious applicants.
For tailored advice on trade mark filing strategies or to review your existing portfolio in light of PAN 1/25, please contact your usual Boult adviser.
