Practice Amendment Notice (PAN 1/25)

On 27 June 2025, the UK Intellectual Property Office (UKIPO) published a Practice Amendment Notice (PAN 1/25), which empowers UK trade mark examiners to consider whether specifications of goods and/or services are “manifestly and self-evidently over-broad”.  This represents a significant sea change to examination practice that will affect applications for UK trade marks and international registrations designating the UK.  The publication of PAN 1/25 comes in the wake of the Supreme Court’s decision in Skykick UK Ltd v Sky Ltd [2024] UKSC 36, a landmark ruling which provided clear authority on the scope of and correct test to be applied when determining whether a UK trade mark has been applied for in bad faith.  All part of its plan to “clarify the behaviour expected of trade mark applicants”, the UKIPO is aiming with PAN 1/25 to ensure that applicants act in good faith when using the trade mark system by seeking registration for goods and/or services which represent fair and reasonable claims in the context of their businesses, for the purpose of denoting trade origin.

SkyKick and “bad faith”

The SkyKick decision has become the weapon of choice for those wanting to challenge overly broad specifications.  Section 3(6) of the Trade Marks Act 1994 provides that “A trade mark shall not be registered if or to the extent that the application is made in bad faith”.  As set out in SkyKick, the essence of a bad faith claim may be understood as:

“…that the motive or intention of the applicant as to engage in conduct that departed from accepted principles of ethical behaviour of honest commercial practices having regard to the purposes of the trade mark system”.

In SkyKick, the Supreme Court held that it could be inferred that a trade mark application had been made in bad faith “from the size and nature of the list of goods and services” covered by an application, and it could also be inferred from the use by the trade mark applicant of overly broad categories of goods and services (for example, “computer software”) where the applicant had an intention to use the mark in relation to some but not all of the goods and services within that broad category.

As recognised in the SkyKick judgment, one advantage of the UK trade mark system is that it allows an applicant to apply to register a trade mark without having made any use of it prior to the date of the application.  However, this leaves the trade mark system open to abuse by applicants who have no intention of using the mark to indicate the trade origin of any goods or services for which they are responsible, but instead simply to block or undermine the otherwise innocent and unobjectionable activities of third parties.  This could create barriers for other traders who wish to enter the market, as the supply of suitable marks is diminished. 

Another feature of UK trade mark law is that a trade mark registration is liable to be revoked if there has been a continuous period of five years after the completion of the registration procedure in which the mark has not been put to genuine use, and there are no proper reasons for that non-use.  This gives the trade mark owner a grace period of at least five years in which to start to use the mark, and means that a trade mark owner can prevent the use of other marks, including in relation to goods or services they have no intention to provide.

From the UKIPO’s perspective, it was important to clarify the behaviour expected of trade mark applicants when filing specifications of goods and/or services to avoid the length and breadth of the specification immediately triggering the “SkyKick claxon”.  The PAN also sets out the impact of the SkyKick decision on the practice of UKIPO trade mark examiners when examining new applications.

PAN 1/25 and “good faith”

As the UKIPO notes in PAN 1/25, it is impossible to prescribe precisely what will constitute bad faith in the context of the provision of a trade mark specification.  However, PAN 1/25 does set out some guidelines for things to watch out for under the snappy heading “Behaviour expected of trade mark applicants”, which highlights that trade mark applicants should:

• be cautious about filing claims covering vast numbers of goods and services in large numbers of classes;
• apply caution when the terms used to describe the listed goods/services are themselves broad;
• be mindful about the use of class headings, particularly (but not exclusively) so for classes which cover a huge range of different (and disparate) goods/services, e.g. Class 9, which covers goods as different as “breathing apparatus for underwater swimming” and “apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity”;
• exercise caution where class headings are used across a multitude of different classes; and
• consider whether general terminology, such as computer software, pharmaceuticals, clothing etc, accurately reflects the intended use of the mark, or whether the selection of sub-categories may be more appropriate.

Impact of PAN 1/25 on practice applied by trade mark examiners

Previously, UKIPO examiners did not routinely raise bad faith objections against overly broad specifications; following the introduction of PAN 1/25, if a specification is considered to be too broad, the examiner will be able to raise an objection under bad faith.

The practice note indicates that the UKIPO will take pragmatic approach.  Examiners will take account of the behaviour expected of trade mark applicants, but “it will be a matter of fact and degree in each case”.

However, the PAN 1/25 gives some examples of cases where examiners will always raise an objections:

• a claim covering broad lists of goods and/or services in all 45 classes; and
• a claim covering all goods in an overly broad class such as Class 9.

If an objection is raised by an examiner, then the applicant will be given an opportunity to provide an explanation of an appropriate commercial rationale for the goods and/or services concerned.  The applicant can also elect to restrict the goods and/or services to a specification that more appropriately reflects the commercial rational.  As under current practice, a period of two months will be permitted for the trade mark applicant to respond to the examiner.  If the examiner is not persuaded to waive the objection, then the applicant will retain the opportunity to be heard and/or to appeal.

Comment

As PAN 1/25 is now in force, it is important for trade mark applicants to avoid using class headings or a full alphabetised list of goods and/or services.  Although examiners might not automatically object to broad terms such as “software”, it might be wise for an applicant not selling numerous types of software for use across many business sectors to specify such a term to relate to goods or fields in which the mark will actually be used, e.g. “accounting software”.

It is also important to bear in mind that, although PAN 1/25 is primarily aimed at trade mark applicants, it is also expected to have wider implications in the context of opposition and cancellation proceedings before the UKIPO’s Tribunal.  As bad faith arguments can be raised at any time during the lifecycle of a trade mark, relying on earlier trade marks registered with broad specifications might result in counterclaims that the earlier trade marks had been applied for in bad faith, which could give rise to a loss (or partial loss) of rights.  This means that trade mark owners will need to be ready to explain their commercial reasons, if challenged on the scope of such trade mark registrations, and should base their case only on the terms they are content to defend against a potential counterclaim on bad faith grounds.