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Michael and Flora consider what brand owners and prospective trade mark applicants need to know in the wake of the UKIPO’s SkyKick guidance.
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Breaking the suspense as to the potential impact on trade mark examination practice of the UK Supreme Court’s long-awaited decision in December 2024 in the Sky v SkyKick case, the UKIPO finally issued its updated guidance on examination practice in June 2025 in the form of a Practice Amendment Notice (PAN).
We examine the practical impact of the PAN on trade mark filing practice in the UK.
The law of bad faith
In the UK, a trade mark may be refused registration (or, if registered, invalidated) if it is made in bad faith.
While there is no statutory definition of what constitutes bad faith, this has been broadly defined in case law as
“a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other sinister motive. It involves conduct which departs f rom accepted standards of ethical behaviour or honest commercial and business practices”.
Broadly speaking, two types of bad faith conduct are distinguished:
- Bad faith towards third parties: for example, trade mark squatting aiming to block a party’s use or registration of a mark in which it has a legitimate interest.
- Abuse of the trade mark system: conduct intended to abuse the trade mark system (e.g. in seeking to secure an unjustifiably broad monopoly). It was this latter type that concerned the Courts in SkyKick.
Bad faith issues in SkyKick
In 2016, Sky, a UK-based television broadcaster and telecoms provider, brought a trade mark infringement claim against SkyKick, an IT service provider based in the US, specialising in automated cloud migration and other cloud-based services in the Microsoft 365 environment.
Sky complained that SkyKick had infringed its ‘Sky’ marks by using various ‘SkyKick’ marks, and that the company had passed off its products and services as being connected with Sky. Sky sought an injunction to stop use of the ‘SkyKick’ marks.
SkyKick filed a counterclaim alleging that the ‘Sky’ marks were invalid on the basis, amongst others, that the applications were in bad faith as Sky had no genuine intention of using the marks for, at least some of, the goods and services covered.
Following referral to the Court of Justice of the EU, the England and Wales High Court determined that a trade mark may be invalid on bad faith grounds if the applicant had the intention of (i) undermining, in a manner inconsistent with honest practices, the interests of third parties, or (ii) obtaining, without even targeting a specific third party, an exclusive right for purposes other than distinguishing goods or services in trade.
The court also held an application may be partly in bad faith if the applicant had an intention to use the trade mark for some of the goods or services, but not for others.
The ‘Sky’ marks were invalidated, and their scope drastically reduced accounting for (i) goods and services for which Sky could never have intended to use the marks (e.g. ‘bleaching preparations’), (ii) categories so broad that Sky couldn’t have intended to use for the whole category (e.g. ‘computer software’) and (iii) class headings so wide that they would include all goods or services in a class, in particular for classes containing disparate ranges of goods and services (e.g. class 9).
The England and Wales Court of Appeal overturned this decision, finding the High Court had taken an extreme approach and that Sky had a commercial rationale to apply for broad goods and services, so the full scope of the marks in the classes relevant to the infringement claim was restored.
The UK Supreme Court overturned the Court of Appeal, upholding the decision of Mr. Justice Arnold (as he then was) on validity at first instance, specifically finding that:
- A trade mark application for a broad category of goods or services could be made partly in bad faith, where the broad description included distinct subcategories for which there was no intention to use.
- The Court of Appeal had not considered all the facts and circumstances, including that Sky (i) originally relied on the full range covered by its marks, (ii) maintained that position despite the bad faith objection until just weeks before trial, and (iii) only presented a narrower range of goods and services as the basis of the claim at closing submissions. This supported SkyKick’s contentions that Sky had secured registrations across a range of goods and services which they had no intention to sell or provide, and were purely intended for use as a legal weapon.
UKIPO PAN
This is the first significant update in examination practice on bad faith in many years, signalling that the UKIPO will now proactively examine bad faith at the examination stage.
The PAN broadly distinguishes two sets of circumstances where bad faith objections may arise on examination, applying categories distinguished in the SkyKick judgment:
- Circumstances that will always trigger an objection by the UKIPO, e.g.
- An application covering a broad lists of goods in all 45 classes
- An application covering the full alphabetical list of goods in a class which contains a wide range of goods or services, e.g. class 9
- Circumstances that may trigger an objection by the UKIPO, where the specification is considered “manifestly and self-evidently broad”, e.g.
- Use of class headings
- Use of general terminology, e.g. “computer software”, “pharmaceuticals”, “clothing”
Bad-faith objections may be raised for all or part of an application. Applicants will be given 2 months to either provide information to explain the relevance of the broad claims to their business or restrict the application to remove the objectionable terms.
The aim is to curtail the use of applications covering broad specifications for purely defensive purposes, with no genuine intention to use as a trade mark, for example, to corner off large sections of the market during the 5-year grace period when the mark cannot be challenged for non-use.
Key takeaways
- The PAN will result in an increased number of examination reports being issued, increasing (on average) the cost and time to registration.
- There is no longer a blanket presumption of good faith vis-à-vis the trade mark system, and the burden of proof has shifted to the applicant to justify the good faith of an application covering broad claims. This dovetails with the UKIPO’s wider effort to investigate suspicious filings and “ghost applicants”, and to work closer with e-commerce platforms to ensure unauthorised third parties are not filing applications solely to enrol in their brand enforcement programmes.
- It is unclear exactly how rigorously the UKIPO will enforce this practice for terms such as ‘computer software’ where an objection will only sometimes be raised.
- Since the penalty for making overly broad claims is limited to removal of the objectionable terms (and it does not, for example, lead to rejection of the entire application), the PAN may end up having only a minimal impact in curbing the behaviour of habitual broad filers, at least until we know how rigorously it is going to be applied.
- The PAN focuses on examination practice, but relying on broad specifications may also lead to third-party opposition or challenges for invalidity on bad faith grounds, and claimants/ opponents should be mindful of the possibility of counterclaims on this basis.
Guidance for applicants
To avoid bad faith objections, applicants should:
- Only seek registration for goods and services for which they have fair and reasonable claims in the context of their business;
- Keep a record of business plans and other documentation that may support the commercial relevance of the claims, which can then be used to respond in the event of objection;
If obtaining registration is time or budget-sensitive, avoid overly broad claims, which could lead to an objection.
This article was originally written and published by Managing IP.
Need assistance?
This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact hlk@hlk-ip.com or your usual HLK advisor.