Latest Guide to UK Trademark Registration

Following the Sky v. SkyKick decision in December 2024, the UK Intellectual Property Office (UKIPO) has published updated trademark guidance on how applicants should draft and file trademark applications in the UK. This significant decision highlights that filing an application with an overly broad description of goods and services without a genuine intention to use may constitute bad faith.

UKIPO examiners now proactively assess whether a goods and services specification is "manifestly and self-evidently broad." Crucially, examiners may now raise bad faith objections directly during the examination phase, without waiting for third-party objections. Upon receipt of the examination report, applicants will have two months to respond and may choose to limit the challenged goods and services or provide arguments and evidence to defend the initially broad scope.

When filing a trademark application in the UK, applicants should consider the following aspects:

• Applicants should include in their trademark registration applications claims for goods and services that “represent fair and reasonable claims in the context of their businesses”.
• Be cautious when using overly broad terms with no intended use. For example, "computer software" is an unacceptable term. The specific type of software should be clearly identified. This will benefit applicants in the long run by ensuring that their rights are clear to both the UKIPO and third parties.
• Whenever possible, choose narrower descriptions and captions, or ensure that any broad terms are paired with narrower subcategories. This will avoid dealing with active objections that could delay the registration process.
• Keep internal documentation such as your business plan and market research to demonstrate why each term was included in your application. This will help you provide business justification to the UKIPO when required.

Overall, it is worth noting that the UKIPO’s strategy change will increase the frequency of examination reports and may lead to examiners assessing bad faith oppositions. This will affect the time it takes to register a trademark and may result in examiners requesting more evidence.