The UK Intellectual Property Office (UKIPO) has issued new statutory guidance which changes the way that UK trade mark applications will be examined.
Background
The Practice Amendment Note 1/125 (PAN) follows the decision of the Supreme Court in the case of Sky v Skykick. We discussed this case in more detail in our previous article, but the judgment clarified the approach that should be taken when determining whether a trade mark has been applied for in “bad faith”.
The judgment emphasised the need for the UKIPO to review specifications on a case by case basis, taking into account all of the circumstances surrounding the application (including the size of the business).
The new PAN changes the examination process for trade marks by giving the UKIPO the power to reject an application on the grounds that it has been applied for with “bad faith”. It also provides some practical guidance for applicants to reduce the risk of this ground being raised.
The PAN states that a “bad faith” rejection will be raised where the specification is manifestly and self-evidently broad. Although this objection will always be raised where an applicant applies for all 45 classes, or for all goods/services within a class, the UKIPO have confirmed that they will not automatically object to broad terms within a specification. For example, broad terms like “computer software” may not be objected to individually, but if the application is made up of a wide range of classes and comprises of lot broad terms like this, the UKIPO may raise the objection.
Considerations for applicants
When preparing an application, it may be useful for applicants to consider the Supreme Court’s reminder that the purpose of a trade mark is to help consumers recognise the origin of goods and services and based on that origin, make an assessment of the likely quality of the goods and services. A trade mark is not there to grant traders an unfair monopoly right across all industries.
The PAN emphasises that applicants need to carefully consider what terms are appropriate for their intended use of the mark and to only apply for what is fair and reasonable to protect their business. When drafting the specification, it will be preferable to use specific terms where possible, but if broader terms are needed, then applicants should consider linking these to a specific industry or purpose (eg computer software for collecting and storing customer data).
It is important to remember that even if the UKIPO do not raise this objection, a third party could still bring a claim (as was the case in Sky v Skykick). Therefore, applicants would benefit from documenting any business plans or discussions held prior to the trade mark being filed so that they are able to show a genuine intent to use the mark for all of the goods and services.
The UKIPO will not review existing marks, but we expect an increase in claims of “bad faith” brought by third parties in light of this change of practice. Owners of existing trade marks may wish to review their marks and assess whether each mark is representative of its use and whether they could demonstrate this should a claim be raised by a third party.
The concept of “bad faith” in itself is not new, but we expect that the UKIPO’s ability to reject a mark on these grounds at the outset will have a significant impact going forwards. We have already seen an increase in the number of applications the UKIPO are pushing back on because of the specification wording (sometimes even when it’s the same as an existing mark). Although these have not been objected to on the grounds of “bad faith”, it goes to show that the UKIPO are paying more attention to specification wording generally.
If you have any questions as a result of this article, please contact: [email protected].
