The UK Supreme Court’s recent decision in SkyKick UK Ltd v Sky Ltd has prompted an important shift in the UK Intellectual Property Office’s (UK IPO) approach to examining trade mark applications. In response, the UK IPO has on 27 June 2025 issued Practice Amendment Notice (PAN) 1/25, alongside new guidance to assist trade mark applicants in navigating the updated legal landscape.
What Was the SkyKick Case About?
The case centred on whether Sky’s broad trade mark specifications – covering hundreds of goods and services – had been filed in bad faith. SkyKick argued that Sky had no genuine intention to use the marks for many of the goods and services listed and that this amounted to bad faith.
The Supreme Court clarified the legal test for bad faith in trade mark filings. A key takeaway from the judgment is that bad faith requires more than overclaiming: it must be shown that the applicant intended to undermine the trade mark system, such as by monopolising the register without a commercial rationale.
What Does the IPO’s New Guidance Say?
The updated PAN 1/25 and accompanying guidance note provide a framework for how trade mark applications will now be assessed. The highlights are:
- Precision Is Key: Applicants are encouraged to avoid overly broad or vague specifications. Generic claims such as “computer software” or “financial services” may invite scrutiny.
- Declaration of Intent to Use: While a general declaration is still required, the IPO may now raise objections or request clarifications where specifications appear suspiciously wide, particularly in core or highly competitive sectors.
- Examination Practice Changes:
- The IPO will assess whether the claimed goods/services are so broad as to suggest no real intention to use.
- However, it will not automatically object unless there is an indication that the application may have been made in bad faith.
- Applicants may be asked to clarify the commercial rationale for certain claims.
- Oppositions and Invalidations: The ruling is likely to have a more significant impact at the opposition or invalidation stage. Competitors can challenge marks on bad faith grounds where it can be shown that the mark was filed without intention to use, or to block others.
What Should Trade Mark Applicants Do Now?
Trade mark applicants should consider the following steps to mitigate risk:
- Review Specification Strategy: Ensure goods and services lists are commercially justified. Tailor applications to actual and reasonably foreseeable business activities.
- Maintain Records: Keep evidence of the commercial rationale behind broad specifications in case the application is challenged.
- Consider Defensive Registrations Carefully: Defensive marks without any intent to use may now carry greater legal risk.
Final Thoughts
The SkyKick decision rebalances the trade mark system in favour of fair use and against speculative filings. While the bar for bad faith remains high, applicants can expect greater scrutiny where specifications appear artificially broad. The UK IPO’s new guidance signals a more proactive stance, particularly at the examination and opposition stages.
If you’re planning a trade mark application – or reviewing an existing portfolio – now is a prudent time to reassess your strategy.
For more information or tailored advice, please get in touch
Written by Thomas Bjorn