Posted on July 08, 2025
We recently issued our thoughts on the practical implications of SkyKick, and how the UKIPO has been applying the Supreme Court’s decision in recent oppositions. The UKIPO has now issued its own guidance on broad specifications following SkyKick (please see Guidance for trade mark applicants following judgment in SkyKick v Sky - GOV.UK), together with a Practice Amendment Notice (PAN1/25) setting out what is expected of Applicants and the changes to the IPO’s practice - PAN 1/25: Required behaviour, and the impact on examination practice, following the Supreme Court’s judgment in SkyKick UK Ltd and another v Sky Ltd and others - GOV.UK
In view of the recent decisions issued by the UKIPO, the guidance and approach set out in the PAN is not surprising. The PAN focuses on examination practice rather than the impact on oppositions and counterclaims for cancellation. It confirms that “As a matter of current practice, our Examiners do not routinely raise bad faith objections against overly broad specifications. This will now change.” We have already seen one Examiner raise an absolute grounds objection under Section 3(6) due to an overly broad specification, covering a wide range of disparate goods and services.
In relation to broad terms such as ‘computer software’, the PAN states: “Caution and due consideration should likewise apply to the selection of general terminology such as computer software, pharmaceuticals, clothing etc. For some applicants, the use of such terminology may represent a good faith and reasonable claim. For others it will not, and the selection of sub-categories may be more appropriate to reflect their intended use.”
We already take this approach when drafting specifications for Applicants, giving careful consideration to the goods and services that are currently of interest to the Applicant, as well as those that are likely to be of realistic commercial relevance in the future. Filing for broad terms like ‘computer software’ may not be appropriate in all cases, but as set out in the PAN, there will be cases where the use of broad terms is acceptable. For example, in the pharmaceutical sector, the therapeutic indication of a product is often unknown at the time of filing, and even if the mark has been allocated to a product, development plans may change down the line. In such cases, it would be entirely reasonable to file for the broad term “pharmaceutical preparations” (unless the Applicant only conducts and will only ever conduct R&D in a narrow field of medicine).
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