Trade Mark Classification
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In June 2025, following the Supreme Court’s judgement in Skykick v Sky, the UKIPO updated its practice concerning specifications of goods and services in trade mark applications.
There has long been a question mark over whether overly broad specifications can be challenged on the grounds of bad faith, the ‘bad faith’ being the lack of a genuine intention to use the trade mark in relation to all of the listed goods or services. Overly broad specifications are often accidental, for example, in an application filed by an unrepresented applicant who might not fully understand the significance of the specification. However, they can certainly be deliberate, and used with the intention of preventing third parties from protecting their trade marks in respect of certain goods or services. While any registered trade mark will become vulnerable to non-use cancellation in relation to unused goods or services after five years, the registered proprietor has the right the block third parties during that five-year period.
Despite that, few, if any, applications have been challenged on bad faith grounds that relate to the specification, most likely due to the lack of a reliable definition of bad faith, and the difficulties associated in showing that bad faith exists.
What is bad faith, and how does it apply to new trade mark applications?
Bad faith is usually defined as unethical conduct, failing to observe acceptable commercial standards, dishonesty, and so on. A lack of use (of a trade mark) is not bad faith, and neither is the absence of an existing or established plan to commence use. However, a lack of intention to use might, depending on the circumstances, constitute bad faith. While having no real intention to use a trade mark might sound trivial, the intention behind it – to obtain an unjustified monopoly that can be enforced against third parties – is less so.
Certain applications will automatically suggest the existence of bad faith, for example, one that covers all goods and services in all 45 classes. While it is not impossible that such a broad scope could be justified, it is difficult to identify any business that would realistically need such broad protection. In such circumstances, unless the applicant is able to justify the scope of the application, bad faith will be presumed.
Less dramatically, bad faith might also be present where overly broad terms are used, in particular, where that broad term could reasonably be sub-divided into distinct categories of product or service, and there is no intention to use the trade mark in relation to all of those categories.
What does this mean in practice?
For most applicants, nothing need change. Those who are represented will already be advised on the appropriate scope of the application, and certainly Hindles’ approach is that a new application should simultaneously reflect the applicant’s current situation, while also accommodating future business plans.
The UKIPO has identified a number of terms that should be used with caution, including common terms such as ‘computer software’, ‘pharmaceuticals’ and even ‘clothing’. The latter term is somewhat surprising, and it will be interesting to see how many applications attract an objection based on this extremely widely used term.
Until now, the UKIPO has not questioned overly broad specifications during examination. This is no longer the case, although the Office has emphasised that the presence of the above, and similar, terms will not automatically lead to an objection. It is also worth remembering that the applicant will be given the opportunity to justify the use of the queried terms and will, in many cases, be able to do so.
Full details of Pan 1/25 can be found here
Full details of Skykick v Sky here
Author: Liz Lowe
Further advice
If you would like to discuss the issue of bad faith in trade mark applications, or any other trade mark matters, please do get in touch with the Hindles Trade Mark Team.