UK Trade Mark and EU Designs update – June 2025

There have been a number of important developments in UK Trade Mark law and practice, and EU Designs, over the last few months. This update covers some of those developments:

• The application of SkyKick by the UKIPO in recent opposition decisions and absolute grounds refusals – how is the UKIPO treating overly broad specifications?
• Exhaustion of rights and UK+ regime
• Delays in the UKIPO issuing decisions in inter-partes proceedings
• The UKIPO’s digital transformation consultation - Discontinuing series marks and improvement of digital services such as documents being available online
• EU Design reforms

SkyKick principles being applied by the UKIPO in Unite the Union (Unite) v Anglican Foundation (O/0369/25), and ENERJO (O/0439/25)
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, 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 proceedings and examination. Our more detailed summary of the Unite and ENERJO cases can be found here.

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.

Exhaustion of rights
On 19 May 2025, the UK Government announced it is maintaining the "UK+ regime" of exhaustion of intellectual property rights, which is reasonably good news for brand owners and other IP right holders, and provides some certainty for parallel imports.

The “UK+ regime” is a bespoke regional exhaustion regime, which has been in place since the end of the Brexit transition period in January 2021. In general terms, this regime ensures that relevant IP rights in goods are exhausted in the UK when a good is placed on the market in either the UK or the European Economic Area.

IP right holders would have been in a stronger position if the UK had adopted a solely national exhaustion regime, where relevant IP rights in goods were exhausted in the UK only when they are put on our domestic market. That would have hindered EU parallel importation, but is not considered to be reconcilable with the Northern Ireland Protocol to the UK-EU Withdrawal Agreement, now amended by the Windsor Framework.

However, the chosen path is not the worst case scenario of international exhaustion, where IP right holders would also have faced parallel importation from everywhere outside the EEA.

You can read the full consultation outcome here.

Delays in the UKIPO hearing matters and issuing decisions
The UKIPO has recently updated its guidance in relation to oppositions and cancellation proceedings, in view of the high volume of pending cases and the backlog which has led to considerably longer wait times for decisions (e.g. 10 months from the hearing date). The guidance sets out the below timescales:

Timeframes, volumes, and appeals
Estimated overall timescales (includes serving times, evidence rounds, defence periods; excludes any consequential matters)

^*timeline estimates are based on Month 0: Form TM7/26 filed and served; Month 3: Form TM8/8N filed and served; Months 3-10: evidence rounds; Month 20 (paper): decision should be issued; Month 21 (hearing): hearing takes place; Month 31 (hearing): decision issued

^*these estimates do not include cooling-off period, stays, extensions of time, or any other additional time incurred to deal with procedural matters

Current volumes

This will be disappointing for brand owners and applicants wanting certainty in shorter timeframes, and might lead to parties deliberately initiating proceedings as a delay tactic. The UKIPO has indicated that it aims to bring the timescale for issuing decisions (from the date of final submissions/hearing) back down to 3 months by March 2028.

UKIPO Transformation Update and the removal of series marks

The UKIPO’s digital transformation programme aims to simplify and improve the UKIPO’s services, with changes to law and IPO policy. The government’s response to the second transformation consultation was published recently, and some of the digital services will be available from Autumn 2025 (starting with the digital patents service).

One of the key changes confirmed recently is the removal of series marks, on which opinion is divided! The benefit of series marks has always been limited, as the marks in the series could only differ as to non-distinctive elements (i.e. only minor differences were allowed, which did not affect the distinctive character of the mark). Accordingly, the additional protection afforded by registering a series of very similar marks was questionable.

Main outcomes of the consultation

• Publishing trade mark and design documents online for the first time, alongside changes to the rules governing confidentiality requests and inspection of designs documents.
• Simplifying trade mark applications by discontinuing the series marks service for new applicants in the future.
• Trialling mediation meetings for disputes at the IPO Tribunal, in cases where neither party has legal representation.
• Extending fee payment periods for Supplementary Protection Certificates (SPCs) to increase consistency across IP rights.
• Reducing the patent inventor address details collected and published.

More information can be found here: Government publishes second transformation consultation response - GOV.UK

EU Design Reforms
After two public consultations and years of analysis, the European Commission has brought in various reforms to improve the EU Design system. Many of the legal and practical changes came into force on 1 May 2025, but further changes will apply from 1 July 2026 (Phase 2). Our briefing note sets out some of the most significant changes introduced by the reforms, which include:

• “Community” designs have been renamed EU Designs (REUD and UEUD for registered and unregistered designs respectively);
• A design notice system, using the Ⓓ symbol has been introduced;
• Multiple designs in the same application will no longer have to be in the same Locarno class;
• The number of designs per application will be limited to 50;
• Deferred publication is no longer subject to the payment of a publication fee;
• The fee structure has been simplified, and renewal fees have increased;
• The calculation of the renewal period has changed, and the last renewal date will no longer be the last day of the month in which protection ends;
• Changes have been made to the definitions of designs to include animations, and of products which now include spatial arrangements and non-physical forms;
• Design holders will be able to prevent transit of goods which incorporate the design through the EU, irrespective of their destination;
• From 1 July 2026, there will be new representation requirements, fast track invalidity proceedings and changes will be required to national legislation in EU member states, in order to harmonise certain aspects of national registered designs.

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