On 27 June 2025, the UK Intellectual Property Office (UKIPO) published Practice Amendment Notice 1/25 (the Notice), amending their examination guidance and practice in light of the SkyKick decision. The Notice is to take immediate effect. The possible implications of the updated guidance are discussed in this article.

Background

In the UK, there is no requirement to have used a trade mark prior to filing a trade mark application. This principle undoubtedly has its benefits (namely, making the process more straight forward for unrepresented applicants), but opens up the trade mark system to possible abuse.

Section 3(6) of the Trade Mark Act 1994 prohibits registration of a trade mark “if or to the extent that the application is made in bad faith”. Essentially, this provision aims to prevent some of these abuses from occurring.

The landmark SkyKick judgment set out a number of principles relating to the interpretation of the bad faith provision. The judgment provided guidance on whether a bad faith finding can stem from an overly broad specification of goods and services, or an overly broad term within it. This may be the case where the applicant had no intention to use the trade mark to the extent claimed.

Based on recent decisions (see a discussion of this in our “Unite Faith Workers' Fellowship” article), the UKIPO has clearly taken note of the SkyKick decision. Indeed, the Notice is further indication of SkyKick’s ripple effect.

Behaviour expected of trade mark applicants

The Notice sets out that Applicants are expected to file specifications that “represent fair and reasonable claims in the context of their businesses”. According to the Notice, this assessment will depend on “the individual nature of the applicant’s business and their motivations for filing for the goods and services concerned” and “it is possible for the same specification to constitute a good faith filing for one applicant, but bad faith for another”.

The Notice also warns applicants to be cautious when filing in a large number of classes, when using class headings and/or when using broad specification terms.

Impact on practice applied by Trade Mark Examiners

The Notice confirms that UK Examiners will now routinely consider whether a filing has been made in bad faith where there is an overly broad specification.

If an objection is raised by an Examiner, the applicant will be given an opportunity to provide an explanation of an appropriate commercial rationale for the goods/services concerned. They may also elect to restrict the goods/services to a specification that more appropriately reflects the commercial rational.

The Notice also states that “opponents and cancellation applicants involved in proceedings before the IPO’s Tribunal should also take note of the guidance at paragraphs 11-13 above. Relying on broad specifications may lead to counterclaims on bad faith grounds. Claimants are reminded they should base their case only on the terms they are content to defend against a potential counterclaim on bad faith grounds”.

Secerna comments

The Notice will no doubt have implications for new trade mark filings and opposition/cancellation proceedings going forward. The UKIPO are due to monitor the impact of the Notice on new filings and opposition/cancellation proceedings.

Nonetheless, the Notice is somewhat lacking in detail regarding the practical implications and raises several questions.

“Satisfactory explanation” of commercial rationale  

The Notice sets out that if a bad faith allegation is raised by the UK Examiner because of an overly broad specification; the applicant will be given the opportunity to provide “an explanation of an appropriate commercial rationale for the goods/services concerned”. Alternatively, the applicant can choose to restrict the goods/services listed to try and overcome the objections.

The Notice does not provide any details as to what would suffice as an appropriate commercial rationale.  Would a witness statement confirming the intention to offer the goods/services from the applicant suffice; or will the UKIPO demand much more specific detail about the applicant’s plans and intentions?

Any evidence filed when disputing such objections is placed onto the public file and available for inspection (unless the UKIPO is persuaded to grant a confidentiality request – not often granted). Detailed plans outlining commercial strategy are likely to be sensitive information that applicants would probably prefer to not be in the public domain.

As and when such objections are raised, challenged and overcome, perhaps it will become clearer what evidence/explanation examiners will deem acceptable.

What is clear is that applicants of all sizes need to think very carefully when covering broad terms and/or an excessive number of classes within their filings.

The assessment of the goods/services with reference to the applicant

Paragraph 10 of the Notice states:

“Applicants should seek registration for goods/services which represent fair and reasonable claims in the context of their businesses, for the purpose of denoting trade origin. It is not possible to precisely prescribe what will constitute bad faith when it comes to the provision of a trade mark specification. That will depend on the individual nature of the applicant’s business and their motivations for filing for the goods and services concerned. It is possible for the same specification to constitute a good faith filing for one applicant, but bad faith for another.”

As such, the assessment of bad faith will be very fact dependent, considering both the specific nature of the applicant’s business and the goods/services covered. The Notice is vague about the circumstances in which an examiner will raise objections – perhaps we can expect an amendment to the UKIPO practice manual in due course.

In view of the fact that an examiner will be required to take into account the specific nature of the applicant’s business, perhaps individual applicants are more likely to receive such objections (as the examiner may find it challenging to find any evidence of their business activities in the public domain and; therefore, struggle to deduce commercial intention,  whereas this will no doubt be a simpler exercise for larger companies).

Only time will tell whether indeed more objections are raised against filings in the name of individuals rather than companies.

Impact on opposition and cancellation proceedings

The Notice refers to the fact that the change in practice should be noted by opponents and cancellation applicants, who may be subject to more counterclaims of bad faith. Nonetheless, the comments made in paragraph 16 in this regard are fleeting.

For those defending against opposition and/or cancellation proceedings, this could be a very handy development. A counterclaim of bad faith could be used to narrow the scope of the opponent’s/cancellation applicant’s rights, potentially increasing the prospects of successfully defending against an opposition/cancellation action.

Again, only time will tell the true impact the Notice has on opposition/cancellation proceedings going forward.