Posted on June 25, 2025
In May 2020, we reported on the High Court’s decision in Sky vs SkyKick here. The Court of Appeal later overturned that decision, but following an appeal by SkyKick, the case progressed to the Supreme Court. In November 2024, the Supreme Court handed down its long-awaited judgement (SkyKick UK Ltd & Anor v Sky Ltd & Ors (Rev1) [2024] UKSC 36 and as reported by us here).
One of the key takeaways from the Supreme Court’s decision was that a lack of intention to use a trade mark for the goods and services claimed at the time of filing may support a finding of bad faith, particularly where the specification is disproportionately broad or lacks commercial justification. In such cases, the relevant part of the specification may be vulnerable to invalidation or refusal. Now, several months on from the Supreme Court’s judgement, the practical implications of the decision are beginning to take shape, as the UKIPO has started to apply SkyKick in a number of recent decisions across both opposition and examination contexts.
Unite the Union (Unite) v Anglican Foundation (O/0369/25)
One such case is Unite the Union (Unite) v Anglican Foundation (O/0369/25), a recent UKIPO opposition decision in which the principles from SkyKick were applied. The Applicant had sought to register the mark “Unite Faith Workers’ Fellowship” for an extremely broad specification of services in Class 35, spanning 47-pages and ranging from “Accounting services relating to costs for farming enterprises” to “Xerography”. Unite opposed the Application under several grounds of the Trade Marks Act 1994 (TMA), but most notably, Section 3(6), which concerns bad faith. Among its arguments under Section 3(6), Unite contended that the Applicant cannot have had any bona fide intention to use the mark across the full scope of the 47-page specification, and that by filing for such an extensive specification, the Applicant had acted in bad faith. Given the relevance of this argument to the issues considered in SkyKick, the proceedings were suspended pending the Supreme Court’s decision in that case. Following the Supreme Court’s ruling, the UKIPO resumed the opposition proceedings, and drawing on the principles established in SkyKick, the Hearing Officer ultimately concluded that the Application had been filed in bad faith. Specifically, the Hearing Officer noted that the specification was “extraordinarily broad” and that the Applicant had failed to provide sufficient commercial justification for such extensive coverage. In the absence of any evidence or explanation from the Applicant, the Opposition succeeded under Section 3(6), and the Application was refused in its entirety.
ENERJO (O/0439/25)
Another recent example is the UKIPO opposition decision in ENERJO (O/0439/25), where SkyKick was also referenced when assessing bad faith. The Applicant, Cashflow Corporation Ltd, had applied to register the mark “ENERJO” in 13 Classes, with a specification that spanned 81-pages and listed a wide range of disparate goods and services. The Application was opposed by SE Bicycles Company Ltd (SE Bicycles) under Section 5(2)(b) and Section 3(6) of the TMA, and under Section 3(6), SE Bicycles argued that the Applicant lacked a genuine intention to use the mark across the full 81-page list of goods and services contained in the Application. Given the nature of this argument, the case was suspended pending the outcome of the Supreme Court's decision in SkyKick, and when the opposition proceedings resumed, the UKIPO again drew from the principles established in SkyKick in its assessment of the bad faith claim. Ultimately, the Hearing Officer concluded that the extraordinary size and disparate nature of the specification, combined with the Applicant’s failure to provide sufficient clarity or reasoning in respect of any reasonable business intention, supported a finding of bad faith. As stated in paragraph 77 of the decision:
“Given the sheer size and disparate nature of the applied for goods and services, and the lack of any clarity from the applicant in respect of any reasonable business intention, I am of the view that this finding applies to all of the goods and services applied for. As such, I find that the present ground succeeds in full.”
The Opposition was therefore successful, and the Application was refused in full.
Absolute grounds for refusal at the examination stage
The principles established in SkyKick may even have filtered through to routine examination practice, or at least put Section 3(6) at front of mind for UKIPO examiners, as we have recently become aware of an absolute grounds refusal issued by the UKIPO on the grounds of bad faith. In that case, the Applicant had filed a specification that spanned all 45 Classes, incorporated the Nice Classification Headings along with additional terms, and included goods and services that appeared incongruous or unrelated - ranging from baby food to real estate services. Although the refusal did not explicitly cite SkyKick, and issuing refusals on this ground is not new IPO practice, the Examiner raised concerns about the breadth of the specification, the consequent lack of commercial coherence, and considered that the Application had been filed without a genuine intention to use the mark across the full scope of the specification. In the absence of any explanation or commercial rationale, the Examiner concluded that the filing may have been made, at least in part, in bad faith, and the Application was refused accordingly under Section 3(6) of the TMA.
These cases serve as recent examples of the UKIPO actively considering whether the breadth of a specification is justified, and whether the Applicant had a genuine intention to use the mark across the full range of goods and services claimed at the time of filing. The application of SkyKick to these decisions indicates a shift towards greater scrutiny of broad trade mark specifications, and an emphasis on commercial justification and genuine intention to use. Indeed, Charlotte Champion, Head of Examinations at the UKIPO, recently stated that SkyKick had demonstrated how overly broad specifications could be considered bad faith filings. Speaking at a recent summer seminar, she emphasised that moving forwards, the onus will be on Applicants to carefully consider the scope of their applications at the time of filing. To support this shift, the UKIPO is preparing to issue a Practice Amendment Notice (PAN), which will set out clear expectations and guidance for Applicants when filing their specifications. We shall be reviewing this and carefully considering the UKIPO’s approach when advising clients in respect of new filings and oppositions, although it is something that we of course already take into account when preparing specifications.
Practical implications for brand owners
In light of the UKIPO’s evolving approach to bad faith following the SkyKick
decision, trade mark applicants and owners should consider the following key points when filing or enforcing their rights:
- Avoid filing overly broad specifications: Carefully consider the scope of your specification at the time of filing, and ensure that it accurately reflects your actual or intended commercial activities.
- Avoid filing purely defensively: Avoid filing broad trade mark specifications purely to block competitors or gain an unfair monopoly, as this may be viewed as an abuse of the system and lead to a finding of bad faith.
- Be aware of the specification ‘red flags’: Extremely long lists of goods or services, the use of vague or very broad terms, or listing goods and services that appear incongruous or unrelated to your business may raise concerns and increase the risk of a bad faith objection or challenge.
- Be prepared to provide commercial justification: If your application or registration contains a wide or unusual range of goods and services, you should be prepared to clearly explain the commercial rationale behind including those goods and services in case of an objection or challenge. You may need to explain how each term is relevant to your current business or future plans.
- Understand the risks: A finding of bad faith can result in the refusal of your application in its entirety, or the partial or full cancellation of your registration.
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