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.

Auntie Jane's Trade Mark Tips: No 8 - Oppositions in the Trade Mark Registry

Intellectual Property Office in Newport

Jane Lambert

In my last trade mark tip, I talked about publication and some of the consequences. In most cases, there are no consequences at all. Your application is published in the Trade Marks Journal and nobody bats an eyelid. If there are no objections the application proceeds to registration as the infographic indicates. But sometimes the Intellectual Property Office receives third party observations which the examiner considers and or even an opposition.

An "opposition" is an application to the Intellectual Property Office to stop the registration of the sign that you want to register as a trade mark. It can be made on any or all of the absolute grounds for refusal mentioned in my sixth trade mark tip and/or the grounds that the objector has an earlier trade mark or an earlier right under s.5 of the Trade Marks Act 1994. An "earlier trade mark" is a trade mark that has been registered for the UK or the EU, an international mark, an application for any of those marks, or a mark that is protected as a well-known mark under the Paris Convention. An "earlier right" is the right to bring an action for passing off, copyright or any other IP right infringement or some other claim that would prevent your using the trade mark. These are known as "relative grounds for refusal".

Your first inkling that you may have a problem could be a letter from the patent or trade mark attorneys or solicitors for the objector setting out the objection and the reasons for it and inviting you to withdraw your trade mark application.  Sometimes it is accompanied by a form TM7A or notice of threatened opposition. This is one of the times when you may need legal advice either from a barrister or solicitor specializing in IP law or a trade mark or patent attorney.

If you decide to proceed with your application, the objector may issue opposition proceedings which he or she does by filling in a form TM7 or a TM7F. The objector (who has now become an "opponent") will fill in a TM7F if he or she wants a fast track opposition. Fast track proceedings are available where the opposition is based on s.5 (1) or (2) of the Trade Marks Act 1994 and the application to register the earlier mark was made less than 5 years ago. The main advantage is that costs awards are limited to £500 but the disadvantage is that there is not usually a hearing. In all other cases, opposition proceedings are to be launched with a form TM7.  If you want to defend your application you must file a notice of defence and counterstatement in form TM8 within 2 months of the service of form TM7.

I described what happens next in some detail in Oppositions in the IPO's Trade Marks Registry on 12 Aug 2015 in NIPC London. Basically, the case goes before a hearing officer who may give a preliminary indication as to how he thinks the case will go. If the case proceeds, the hearing officer will direct the parties to file evidence. If you are unable to resolve your dispute opposition through direct negotiation or perhaps mediation the hearing officer may decide the case on the written materials only or order a hearing if you or the opponent so wishes. That will usually take place at the Intellectual Property Office in Newport with one or both of the parties sitting in London or occasionally elsewhere. It tends to follow the usual course of civil proceedings with the opponent opening and closing and the applicant responding. Judgment is usually reserved for several weeks and is delivered in writing. An unsuccessful party may appeal either to a tribunal within the IPO known as "the appointed person" or to the Chancery Division of the High Court.

If the opposition fails either before the hearing officer or on appeal the trade mark application to register the trade mark proceeds to grant. If it succeeds the application is stopped in its tracks.

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.

Auntie Jane's Trade Mark Tips: No. 7 - Some more Things that can go wrong

Author JulieB2768
Licence: Creative Commons Attribution-Share Alike 3.0unported  

Jane Lambert

Since my last trade mark tip on 15 June 2017, the IPO has published a timeline of the Process for applying to register a trade mark.  It's a really useful graphic which does a lot of my work for me,

We are now at stage 6 - "Publication."

If you go back to the timeline you will see a note in brackets.  If the examiner has no objections your application will be published in the trade mark journal for 2 months which can be extended to 3 during which time anybody can make "third party observations."

That is true but not the note is incomplete in several important respects which will become apparent if you click the number 6 or the accompanying note on the graphic.  The graphic links to a page entitled "Check the Trade Marks Journal".

For most people, the Trade Marks Journal is about as interesting as the telephone directory and equally impenetrable but it will be examined avidly by businesses called "watch services" whose job is to spot applications for trade marks that might possibly conflict with another mark. It may also be read by your competitors who fear you may be up to something but don't yet know what and possibly by busybodies with more time on their hands than is good for them. They are the ones who could delay or even defeat your trade mark application and they will certainly waste your time and cost you money, Ugh!

If you instructed a patent or trade mark attorney to make your application on your behalf there is a good chance that most of the busybodies and maybe some of your competitors will back off because they know that your attorney will respond if they make an objection. But if they think you are on your own they may make a "third party observation" or even launch an "opposition."

Now oppositions are something you really have to worry about because they go before a hearing officer whom you may remember from my last tip.  In that article, I said that hearing officers decide disputes between applicants for trade marks and examiners. These are called "ex parte" hearings because they are between you and the examiner. Hearings between you and people who don't want you to get or keep a trade mark are called "inter partes" which literally means "between other parties". "Inter partes" proceedings are much more like trials in the civil courts than "ex parte" hearings. Parties are represented by barristers, solicitors or attorneys and the loser has to pay the winner some costs.  As Mr Trump might tweet if he is a few letters short of 140, "bad news" or even "very bad news".

Much less worrisome are "third party observations" which are made under s.38 (3) of the Trade Marks Act 1994:

"Where an application has been published, any person may, at any time before the registration of the trade mark, make observations in writing to the registrar as to whether the trade mark should be registered; and the registrar shall inform the applicant of any such observations."

The next paragraph adds:

 "A person who makes observations does not thereby become a party to the proceedings on the application."

If you click the link "object to a trade mark application" link on the "Check the Trade Marks Journal" page, you will be taken to a page headed "Objecting to other peoples trade marks and the legal costs" You will find that most of that page is on oppositions but there are the following lines on third party observations:

"At any point after we have accepted and published an application for registration, and before it is actually registered, anyone can make what we call ‘third party observations’.
You can tell us if you think that we accepted the application in error. You must bring to our attention any relevant facts of which we may not have been aware at the time we accepted the application.
Making a third party observation is not a formal legal action, and we are not bound to act on them. We may rely on evidence given in an observation to support any later objection to the application.
There are several ways to file third party observations with us."

I wouldn't bother clicking the link under "file" because it is mainly about patents. Basically, you can send your observations by post, fax, email or traipse down to Newport and hand them over to reception. If you do go to Newport you might like to check out what's at the Riverfront Theatre where you might see Ballet Cymru if you are very lucky and the excavations and museum at Caerleon (see Tip #2).

Well, that's all for now folks. Next tip will be about Oppositions.

Meanwhile. third party observations put me in mind of Alexander Pope:

"Damn with faint praise, assent with civil leer,
And without sneering, teach the rest to sneer;
Willing to wound, and yet afraid to strike,
Just hint a fault, and hesitate dislike;
Alike reserv'd to blame, or to commend,
A tim'rous foe, and a suspicious friend."

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.  

 

Auntie Jane's Trade Mark Tips: No. 5 - How do I register a Trade Mark?

Jane Lambert

Probably the best advice I can give to an entrepreneur or some other business owner who wants to register a trade mark is:  consult a trade mark attorney.  In  Can I apply for a Trade Mark by myself or must I instruct an Attorney? 31 May 2017 I advised that it is possible to apply for a trade mark without an attorney, that it has been done many times before and that unrepresented applicants can expect a certain amount of practical help from the Intellectual Property Office ("IPO") but I would not recommend it. I cautioned that it is a lot of trouble to save a few hundred pounds and it could result in a lot of extra expense as there are many pitfalls in the process.

In that article, I directed readers to the "Find an Expert" section of the Chartered Institute of Trade Mark Attorneys' website or suggested that they might attend an IP clinic or even have a word with me. The fee that any of them would charge for taking your instructions, ascertaining your needs and preparing your application would be chickenfeed compared to the cost of your time in learning how to do all that for yourself. If you try to do it yourself there is a much higher risk of something going wrong. And in the very unlikely case that an attorney gets it badly wrong, he or she is regulated and insured against professional negligence whereas you are not.

For those who chose not to take my advice, I gave a number of tips. They are worth reading again even if you do instruct your attorney because you will find it easier to instruct your attorney and the attorney will find it easier to advise you if you know what is going on.  If you want to register an EU trade mark you should also read the EU Trade Mark fact sheet published by the IPR Helpdesk.

Your application to register a mark does not mean that it will be accepted. In tomorrow's tip, I will consider some of the things that could possibly go wrong. Theresa May will tell you all about that.

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.  

Auntie Jane's Trade Mark Tips: No. 3 - Where to find the Law

Wildy's Book Shop

Photo Elisa Rolle
Creative Commons Attribution-Share Alike 4.0 international licence
Source  Wikipedia

Updated 23 May 2022

Jane Lambert

Obviously, you find law in a law book and you find law books at a legal bookseller.  And here's a picture of one that is nearly 200 years old. Wildy & Sons positioned strategically between the Royal Courts of Justice and the barristers and other legal professionals of Lincoln's Inn is one of the sights of London. It is almost next door to The Seven Stars, one of the best and oldest pubs in London.

But I digress.  This is what you could ask for were you ever to visit Wildy's.

In Auntie Jane's Trade Mark Tips No 2, I told you about Briitish trade marks which protect brands in the UK only and EU trade marks which protect them throughout the whole of the European Union.

The law that governs British trade marks is the Trade Marks Act 1994. That Act has been amended several times since it was first enacted and you can find a convenient though unofficial consolidation on the IPO website at Unofficial Consolidated versionTrade Mark Act 1994 as amended.  The Act allows ministers to make rules for the operation of the Act which you will find in Consolidated Trade Mark Rules on the same website.  Our Act was passed to give effect to the Trade Mark Directive (Directive 2008/95/EC) which is the ultimate source of our trade mark legislation.

The law that governs EU trade marks is Council Regulation (EC) No 207/2009 of 26 Feb 2009 ("the EU Trade Mark Regulation"). If you compare the Regulation with the Directive you will find many similarities. That is not surprising because both sets of legislation were made by the European Council and both need to comply with international agreements such as the Paris Convention for the Protection of Intellectual Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS").

From time to time disputes arise as to the meaning and effect of the above legislation which sometimes go to court. The ultimate authority on EU law is the Court of Justice of the European Union. The highest court of the United Kingdom is the Supreme Court.  Important decisions are also made by the Senior Courts of England and Wales, their equivalents in Scotland and Northern Ireland and IPO hearing officers.  You will find most of the relevant decisions on the British and Irish Legal Information Institute ("BAILII") website.

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.  

Auntie Jane's Trade Mark Tips: No. 2 - EU and British Trade Marks

Jane Lambert

Updated 23 May 2022

Businesses can protect their brand in the UK by applying to the Intellectual Property Office ("IPO") for a British trade mark and in the EU by applying to the EU Intellectual Property Office ("EUIPO") for an EU trade mark which will take effect in every EU member state.

The conditions for obtaining an EU trade mark are very similar to those for obtaining a British trade mark. So, too, are the rights granted upon registration. It is rather more expensive to obtain an EU registration than a British one but then your mark is protected in 27 countries.

The EUIPO is located in Alicante in Spain which seems a very nice place:

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The IPO is in Newport in South Wales.  Maybe not quite so glamorous but jolly nice all the same.

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.  

Auntie Jane's Trade Mark Tips: No. 1 - The Very Basics

Jane Lambert

If you really were born yesterday and you are not just wet behind the ears but positively soaking, you may find these animations helpful.

The first is called "Trademarks" and was published by the World Intellectual Property Organization ("the WIPO"), the specialist agency of the United Nations responsible for intellectual property, and Indecopi of Peru, with funding from South Korea.  It is about trade mark law generally and is not country specific.

By the way, we usually spell "trade mark" as two separate words in the United Kingdom and most other Commonwealth countries contrary to what the spell checks try to tell you.  Americans combine "trade" and "mark" into just one word.


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I hope you enjoyed that film.  Another that you may like, which is also published by the WIPO with South Korean help, is "Porro and his Friends create a Trade Mark".

Now, here is an animation from our very own Intellectual Property Office ("IPO") in Newport called "IP Basics: Should I get a Trade Mark?" The IPO's video summarizes the law here.

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You should be ready for my articles, "Brands" and "Trade Marks" as well as the IPO's guidance "Apply to register a Trade Mark".

If you have made it this far, you deserve a treat.  Ballet Cymru is another famous institution based in Newport.  Click this link to see those beautiful young dancers perform TIR to the mellifluous voice of Cerys Matthews.

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.  

Can I apply for a Trade Mark by myself or must I instruct an Attorney?

Jane Lambert

The answer is "yes".  You can apply for a trade mark without an attorney. It has been done many times before.  You will get a certain amount of practical help (though no legal advice) from the Intellectual Property Office ("IPO").  But I would not recommend it. It's a lot of trouble to save yourself a few hundred pounds and it could land you in a lot of extra expense as there are lots of pitfalls in the process.

Why you should instruct an Attorney
It takes time to qualify as a trade mark attorney.  Trainee trade mark attorneys learn about the sort of marks that are registrable and those that are not.  Attorneys know what to look out for on a trade mark search. They know how to draft your specification in a way that is wide enough to cover every business activity you are likely to undertake but not so broad that it leads to an objection. If, for any reason, there is an objection to your application an experienced attorney stands a very good chance of resolving it quickly and inexpensively.

Where to find an Attorney
If you do not already instruct a trade mark attorney here are some possible ways of finding one.  You can consult the Chartered Institute of Trade Mark Attorneys' website. There is a link to a searchable database of all the attorneys in the country.  If you want a personal recommendation, I can introduce you to attorneys with whom I have worked successfully in the past.  You could also attend one of the IP clinics that the Chartered Institute of Patent Attorneys runs in conjunction with Business and IP Centres and PatLib libraries around the country.

What to do if you decide not to take my Recommendation
If, despite my recommendation, you decide not to instruct a trade mark attorney:

Tip #1 Read the IPO guidance very carefully.
The IPO has published the following useful guides:

• Apply to register a trade mark
• What you can and can't register
• Apply
• After you apply.

Make sure you understand everything in those documents before you do anything,

Tip #2: Carry out a thorough trade mark search

You can search the IPO, EUIPO  and WIPO databases yourself or you can ask a patent librarian to make a search for you for a small fee.

Tip #3: Make sure that your application covers all relevant goods and services 

You register a mark in respect of specified goods or services. Make sure that the goods and services in respect of which you register your mark cover not just simply the goods and services that you are supplying now but all those that you plan to supply at any time over the next 5 years.

Tip #4: If there is an objection to your application, take professional advice at once

If the examiner says that your mark is unregistrable because it falls within one or more of the absolute grounds for refusal provided by sections 3 and 4 of the Trade Marks Act 1994 or if a third party objects on the grounds that your proposed registration is too close to his or her mark then your application is in trouble. Sometimes such objections can be resolved by negotiation. If not, they may go to a hearing before an official known as a "hearing officer". Should that happen, the costs will escalate sharply.

Tip #5: Consider IP insurance

IP litigation can be ruinously expensive, especially for small and medium enterprises.  You can insure against those costs by taking out specialist IP insurance before a dispute actually arises.

Tip #6:  Engage a Watch Service

A watch service looks out for applications that are similar to yours so that you can object to a third party's application and try to hammer out an agreement at an early stage. Leeds Business and IP Library offers a very cost-effective one. Several trade mark attorneys and other commercial organizations also offer watch services.

If you are still considering whether or not to register a trade mark or if you have applied to register a trade mark and hit any of those problems, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.