Too Broad for Belief? UKIPO Blocks "Unite Faith Workers' Fellowship" Citing SkyKick

Following the Supreme Court's pivotal SkyKick decision on bad faith in trade mark applications, a recent ruling by the UKIPO demonstrates its practical implications. This case involves an opposition by Unite the Union against the Anglican Foundation's application for the trade mark “Unite Faith Workers’ Fellowship,” with the breadth of the applied-for services proving to be a key factor in the outcome.

Background

Unite the Union (“the Union”) is one of the largest trade unions in the UK. Founded in 2007, the Union now boasts around 1.2 million members. The Union has several UK registered trade mark rights for ‘UNITE’ marks, covering a range of services, including in Class 35, Class 36, Class 41, Class 42 and Class 45.

The Anglican Foundation (“the Applicant”) applied to register the trade mark “Unite Faith Workers’ Fellowship” back in December 2020 for an enormous list of services in Class 35 (taking up 47 A4 pages within the decision).

The application was opposed by the Union with grounds based on Section 5(2)(b) (likelihood of confusion), 5(3) (reputation), 5(4)(a) (passing off) and 3(6) (bad faith) of the Trade Marks Act 1994.

The Union alleged that the application fell foul of Section 3(6) primarily because:

A. Two of the directors of the Applicant were members of the Union and were engaged in a discrimination dispute with the Union. As such, the application was made in the context of a campaign against the Union and fell short of the requisite standards of fair and honest commercial behaviour.

B. The application had been filed for a broad range of services for which the Applicant could not have had a bona fide intention to use the mark for; instead, it was filed to undermine the Union’s interests.

In support of this ground, the Union filed evidence showing the Applicant’s activity on social media and website activity, much of which was centred around the ongoing discrimination dispute. The Applicant filed no evidence or submissions.

It was deemed appropriate to stay the proceedings pending the outcome of the SkyKick case, given that this case centred around an allegation of bad faith with respect to an overly broad specification.

The Supreme Court handed down its judgement in the SkyKick case back in November 2024. The key findings were as follows:

1. Depending on the circumstances, the size and breath of a specification of goods/services could lead to an inference of bad faith.

2. Where a specification includes a broad category of goods/services, it may be held partially invalid for bad faith if that broad category includes distinct sub-categories for which there was no genuine intention to use the mark. This risk is particularly relevant for terms such as ‘computer software’, for example.

As a consequence of the SkyKick decision, the Tribunal wrote to both parties to invite further submissions, before reaching a decision in April 2025. The Union did indeed file further submissions, whilst the Applicant elected not to do so.

Decision

In view of the exceptionally wide array of Class 35 services, the Union requested that the Tribunal first considered the bad faith ground, given that comparison of the respective services (relevant for the other grounds) would have been a time-consuming exercise. The Tribunal agreed and proceeded with this approach.

For ease of analysis, the Tribunal condensed the 47-page specification down to 14 rough sub-categories of services, as follows:

• • Accounting services relating to costs for farming enterprises
  • Arranging of newspaper subscriptions
  • Auctioneering services relating to agriculture
  • Business advisory services relating to the establishment of motor dealership
  • Business management of sporting venues [for others]
  • Computerised stock management
  • Gas meter reading for billing purposes
  • Mail order retail services for cosmetics
  • Model recruitment agencies
  • Retail services in relation to sex aids
  • Shop window dressing
  • Theatrical casting agency
  • Wholesale services in relation to sorbets
  • Xerography

The Tribunal concluded that the sheer breadth of the specification is sufficient to call into question whether the Applicant had an intention to use the trade mark in accordance with its essential function in relation to all of the services in the application, and the evidence filed by the Union was sufficient to show that the Applicant’s intention was a bad faith intention (namely, to interfere with/undermine the Union’s business).

Where a prima facie case of bad faith is found, the onus shifts to the Applicant to attempt to rebut the finding of bad faith. In any event, the Applicant made no submissions attempting to rebut the bad faith allegation, and the Tribunal concluded that the application should be refused.

Comment

The UKIPO’s decision in this case shows some of the practical implications of the landmark SkyKick case.

Where a filing contains a broad range of goods and services, be prepared to justify filing for such a broad range, even where an applicant has filed in only one Class. Whilst there was no rebuttal from the Applicant in this instance, it will be interesting to see how other applicants rebut allegations of bad faith based on overly broad specifications going forward.

The decision can be found via: https://www.ipo.gov.uk/t-challenge-decision-results/o036925.pdf