Applying for Trade Marks in Bad Faith

Piccadilly Circus at Night

Author Jimmy Baikovicius Licence CC BY-SA 2.0 Source Wikimedia Commons

Jane Lambert

One of the grounds on which a trade mark registration can be revoked is "that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use" (s.46 (1) (a) of the Trade Marks Act 1994). Another is that "such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use" (s.46 (1) (b)).

Those provisions mitigate the abuse that Lord Kitchin identified in para [4] of his judgment in SkyKick UK Ltd and another v Sky Ltd and others [2024] UKSC 36, [2025] Bus LR 251 "where a person applies to register a mark without having made any use of it and without intending to use it in the course of trade in relation to the goods or services for which protection is sought."  The only problem is that a party objecting to such a registration had to wait 5 years before he or she could apply for the revocation of the registration.

As a result of the Supreme Court's judgment in that appeal, there is now another option. An application to register a trade mark may be opposed under s.3 (6) on the ground that the applicant does not intend to use the mark for all the goods or services in respect of which registration is sought.  A new Practice Amendment Notice (PAN 1/25) was published on 27 Jun 2025 providing guidance for applicants, examiners and opponents following that judgment.

Para 9 of PAN 1/25 requires applicants to act in good faith. They should use the registration procedure in the manner and for the purpose for which it is intended. The notice continues:

"It is, in the first instance, for applicants to satisfy themselves that they are acting in good faith. Given the Supreme Court’s guidance, a good faith filing will likely not be achieved by filing without an intention to use. That also applies to the use of general terms covering multitude of sub-categories, where intended use covers only one (or some) of those sub-categories"

Applicants should be cautious about filing claims covering vast numbers of goods and services in large numbers of classes. Caution should also be applied when the terms used to describe the listed goods/services are themselves broad.

The notice states that up to now, examiners have not routinely raised bad faith objections to overbroad specifications.  That is about to change. When examining applications (including international registrations designating the UK), examiners will consider whether the specification is so manifestly and self-evidently broad that a bad faith objection should be raised.  If an examiner raises an objection, the applicant will be allowed 2 months to provide an explanation for the specification.

Those unfamiliar with the Supreme Court's judgment should consult my case note, The Supreme Court's Judgment in SkyKick v Sky, which I posted to NIPC Law on 19 Dec 2024.   Anyone wishing to discuss this article or my case note may call me on +44 (0)20 7404 5252 during UK office hours, or send me a message through my contact form at any time.