Trade Mark Resources

Jane Lambert

Over the years, I have written a lot of articles about trade mark law, but I had never organized them in any way until now.  Earlier this afternoon, I compiled a resource page for trade marks similar to the one that I have created for patents.   It can be accessed by clicking "Trade Marks" in the "Basic Information" panel to the right of the page.

"Trade Marks"  discusses registered and unregistered marks in all jurisdictions.  Supplementing it are the "FAQ", an index page to some short articles that I called "Auntie Jane's Trade Mark Tips" and introductions to UK and EU trade mark law.

I mention registration of trade marks, the rights conferred by registration, examination, opposition and certification and collective marks.

Anyone requiring further information may call me on +44 (0)20 7404 5252 during normal UK office hours or send me a message through my contact form. 

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. 6 - Some of the Things that can go wrong

Author Priwo
Source Wikipedia

Jane Lambert

There are all sorts of reasons why your application to register a mark might fail.

The official who examines your application ("the examiner") may consider that your mark falls within a number of statutory exclusions. For a start, the examiner may consider that the subject matter of your application is not even a trade mark, possibly because it is not a sign, or perhaps because it can't be expressed in writing or doesn't distinguish your goods and services from those of your competitors.

Even if it is a trade mark, the examiner may object to it on the grounds that it is not distinctive, that it is descriptive of the goods or services, or common to the trade. He or she may consider your proposed mark to be offensive or it may be too similar to a royal, national or other protected emblem. Those objections are called "absolute grounds for refusal" and are set out in sections 3 and 4 of the Trade Marks Act 1994.

Wherever possible, the examiner will give you an opportunity to overcome the objections. If you fail to take advantage of that opportunity or if the examiner believes that the objection cannot be overcome he or she may refuse your application.

If you think the examiner is wrong you can appeal against his decision to the Registrar of Trade Marks (that is to say the Comptroller or Chief Executive of the IPO). The Registrar will appoint an official called "a hearing officer" to consider your appeal. I have described the appeal procedure in "If the examiner says "no" - ex parte hearings in the Trade Marks Registry" 10 Aug 2015 NIPC London. That is where I or some other specialist intellectual property barrister can often help. We can advise you of your chances of success and, if necessary, represent you at the hearing before the hearing officer.

Even if the examiner has no objection to your application or you manage to overcome any objection that he or she raises, you may not be out of the woods. Someone else may object to your application and I will consider that problem next time.

Until then, I leave you with my case note on T-397/09 Prinz von Hannover v OHIM  [2011] EUECJ T-397/09  (Trade Marks: Prince Ernst August of Hanover and Brunswick etc v OHIM 6 June 2011 NIPC Law). Cheeky wasn't he!

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.