The UK Intellectual Property Office (IPO) has published revised guidance for trade mark applicants in the wake of a landmark Supreme Court ruling in SkyKick UK Ltd and another v Sky Ltd and others. The judgment, which centred on the issue of bad faith in trade mark registrations, has led to immediate changes in how applications will be assessed.

The IPO’s updated Practice Amendment Notice (PAN 1/25) offers clarification on trade mark specifications and sets out when applicants might come under scrutiny for submitting overly broad claims.

What Applicants Need to Know

  • IPO examiners will now consider whether the wording in an application is “manifestly and self-evidently broad”. If an applicant appears to lack genuine intent to use the trade mark for all the listed goods or services, objections on the grounds of bad faith may be raised.

  • Applications that cover the entire range of goods in Class 9—which includes a wide array of software and technology products—or that span all 45 trade mark classes, are now likely to face automatic objections.

  • Applicants will be given two months to address such objections, either by narrowing the scope of their application or by providing a valid commercial justification for the breadth of their claims.

Implications for Trade Mark Strategy

In light of these changes, businesses submitting trade mark applications should:

  • Ensure the specifications accurately reflect current or intended business activities

  • Avoid broad or catch-all language unless it can be commercially justified

  • Be ready to defend wider applications with clear evidence of intended use if challenged

Preparing for a More Rigorous Process

The updated rules are aimed at curbing misuse of the trade mark register and promoting greater transparency. However, they also raise the bar for applicants, who will now need to approach trade mark filings with more careful planning and legal foresight.

If you’re considering filing a trade mark or reassessing a recent application, it could be beneficial to consult a Chartered Trade Mark Attorney for tailored advice. Please contact us if you would like a recommendation.

For more information, read the full guidance here: https://www.gov.uk/government/news/guidance-for-trade-mark-applicants-following-judgment-in-skykick-v-sky