Following the UK Supreme Court’s decision in SkyKick UK Ltd v Sky Ltd (the full decision can be accessed here, and our IP Review article commenting on the decision can also be accessed here), the UKIPO has issued a Practice Amendment Notice (PAN) 1/25) (here) to clarify an “applicant’s behaviour” when it comes to trade mark descriptions, as well as the impact the decision will have on the UKIPO’s practice when examining new applications.
This PAN is effective immediately.
The PAN emphasises that an Applicant should be acting in good faith when making trade mark applications, using a description of goods/services which is seen to represent “fair and reasonable claims in the context of their business, for the purpose of denoting trade origin”. It is noted that this may vary from one Applicant to another.
It also cautions Applicants against applying for a large number of goods and services, in a large number of Classes and against using overly broad descriptions of goods/services.
As to the impact on the examination of new UK trade mark applications, while the UKIPO previously did not raise objections on the basis of bad faith (under Section 3(6) of the UK Trade Mark Act 1994), they will now do so.
Going forward, the UKIPO will consider whether the applied for description of goods/services is “manifestly and self-evidently broad”. If they consider that it is, an objection will be raised based on the Applicant’s bad faith.
If an objection is raised on this basis, the Applicant will need to justify the commercial rationale behind their claims or narrow the description accordingly.
In some cases, the UKIPO will always raise an objection. For example, a claim covering broad lists of goods/services in all 45 Classes, or a claim covering all goods in Class 9 (which cover a wide range of goods, for example, “computers” and “sunglasses”).
It is important to note that the guidance clearly states that the UKIPO will not automatically object to broad terms such as “computer software” (Class 9) or “clothing” (Class 25).
While the PAN is primarily focused on examination practice, it could impact Cancellation Applicants or Opponents who rely on broad descriptions of goods/services when enforcing their rights. They could now face counterclaims alleging bad faith, challenging the basis of their dispute.
The guidance underscores the importance of fair and reasonable trade mark descriptions that align with Applicants’ actual business intentions. It acknowledges that what constitutes bad faith may vary depending on the context – what is acceptable for one business might be deemed excessive for another.
The PAN and the guidance offered within are welcomed as they clarify the UKIPO’s position following the SkyKick UK Ltd v Sky Ltd outcome and settle the uncertainty around how to approach tailoring descriptions of goods/services and enforcing broadly registered marks at the UKIPO.
Now all that remains to be seen is the extent to which bad faith objections are raised by the UKIPO and as a counterclaim in contentious UKIPO proceedings.
Hannah Gamblin
Trade Mark group
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP July 2025
