Bad faith and trade marks: the UK IPO acts on SkyKick
New guidance issued by the UK Intellectual Property Office (UK IPO) in Practice Amendment Note 1/25 directs that UK trade mark applications that are obviously too broad in the scope of their goods and services are now likely be rejected.
Trade mark applicants have always had to specify the goods and services for which they seek exclusive trade mark rights and, under section 3(6) of the Trade Marks Act 1994, a trade mark registration may be prohibited “if or to the extent that the application is made in bad faith”.
This somewhat vague provision was clarified at the end of last year in the Supreme Court’s seismic decision in SkyKick UK Ltd v Sky Ltd. The judgment provided welcome guidance on whether an overly broad specification of goods and services, or an overly broad term within it, amounts to bad faith. The classic case of bad faith is where the applicant had no intention to use the trade mark to the extent claimed, and was applying for the mark for tactical purposes in order to prevent innocent third parties – known or unknown – from using the brand.
Before SkyKick, these wide-ranging applications (such as Sky’s trade mark that included “whips”) were routinely allowed by the UK IPO. It was left to third party trade mark users adversely affected by the registrations (such as defendants to trade mark infringement proceedings like SkyKick UK Limited) to object.
Following SkyKick and the subsequent UK IPO guidance, where the list of goods and services of a trade mark application is manifestly and self-evidently broad, a bad faith objection will now be considered by the UK IPO (and the Courts).
If an objection on bad faith grounds is raised by an Examiner, the applicant will be given an opportunity to provide an appropriate commercial rationale for the goods/services concerned. The applicant may also elect to restrict the goods/services to a specification that more appropriately reflects their commercial rationale. As per standard practice, a period of two months will be permitted for a response.
The new guidance is bound to affect the way in which trade mark applicants, and their advisers, prepare their specification of goods and services, since every item applied for will now have to be commercially justifiable.
However, it is not only trade mark applicants that are given pause for thought by SkyKick and the new guidance. Claimants in trade mark litigation, opponents and cancellation applicants are also likely be affected, since relying on broad specifications in registered trade marks may well trigger counterclaims by defendants on the grounds of bad faith. Claimants and opponents should therefore base their case only on the terms they are content to defend against a potential bad faith counterclaim.
Looking ahead, SkyKick and the subsequent guidance are likely to herald narrower trade mark applications in the UK and, it would seem, a more cautious approach to litigation. All in all, this is therefore welcome news for competition in the marketplace.
