IPO Issues New Guidance on Trade Mark Specifications
The UK Intellectual Property Office (IPO) has issued updated guidance for trade mark applicants following a key Supreme Court judgment. The decision in the case of SkyKick UK Ltd and another v Sky Ltd and others, which focused on the concept of bad faith in trade mark filings, has prompted immediate changes to how trade mark applications will be examined.
The IPO’s new Practice Amendment Notice (PAN 1/25) clarifies expectations around trade mark specifications and outlines when applicants may face scrutiny over overly broad claims.
Key Points for Applicants
- Examiners will now assess whether claimed specifications are ‘manifestly and self-evidently broad’ and may raise objections on grounds of bad faith if no genuine intention to use the trade mark across the full range of claimed goods or services is apparent.
- Applications covering all goods in Class 9, which covers a significant range of software and tech products, or all 45 trade mark classes are likely to trigger automatic objections.
- Applicants will have two months to respond to objections by either narrowing the specification or providing a clear commercial justification.
What This Means for Your Trade Mark Strategy
Businesses applying for trade marks should now:
- Ensure specifications reflect actual or planned business activity.
- Avoid catch-all terms unless they can be justified.
- Be prepared to explain broad filings if challenged.
Support and Advice
These changes are designed to reduce misuse of the trade mark register and improve clarity for all users. However, they may also increase the need for early strategic thinking and professional input when preparing applications.
If you’re planning to file a trade mark or need to review a recent application in light of the new guidance, we’d recommend speaking with a Chartered Trade Mark Attorney to be sure you’re fully aware of the changing guidance.
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