Following the Supreme Court’s landmark ruling in the case Skykick UK Ltd v Sky Ltd (2024 UKSC 36), the UKIPO has now issued a new Practice Amendment Notice (PAN 1/25) affecting the use of overly long lists of goods/services and broad terms in UK trade mark specifications.

Crucially, the new practice may result in the UKIPO objecting to trade mark applications which include unduly broad terms or unduly long lists of goods/services on the grounds of ‘bad faith.’

The PAN aims to “clarify the behaviour expected of trade mark applicants” – to ensure applicants consider what is truly appropriate for their current and intended use plans for a trade mark, to try to avoid such objections arising.

Our article from November 2024, explored the Skykick ruling in more detail, whilst our insight piece from 30 January 2025, set out practical considerations for trade mark owners arising from the Skykick ruling.

One of the outcomes from Skykick was that, absent a satisfactory explanation of the ‘commercial rationale’ behind the list of goods/services, a trade mark registration may be wholly or partially invalidated by a third party for being overly broad on the grounds of ‘bad faith’.

For instance, the practice of filing in all 45 classes may have been used by a mark owner with the simple aim to block others from using and registering an identical or similar mark for all goods/services. In reality, a trade mark owner is likely to have an intention to use their mark only for a smaller selection of those goods/services. The risk of bad faith invalidity actions may even extend to the use of broad terms, which in the Skykick case, primarily focussed on the term ‘computer software.’

The Supreme Court’s decision at Paragraph 261 states:

““… there can be no doubt that an application to register a mark in respect of a broad category of goods or services may be made partly in bad faith in so far as the broad description includes distinct subcategories of goods or services in relation to which the applicant never had any intention to use the mark, whether conditionally or otherwise.”

There is no set rule as to what will, and will not, lead to a bad faith objection. However, the PAN gives examples of where an applicant will face an objection or may at least need to take care and ‘exercise particular caution’, if the goods/services contain overly long specifications and/or unduly broad terms:

1. filing in all 45 classes will result in an objection being raised;
2. filing for all goods in Class 9, an overly broad class, will also result in an objection;
3. filing claims covering vast numbers of goods and services in large numbers of classes;
4. use of the ‘class headings, especially across a “multitude of classes”;
5. use of broad terms used to describe the listed goods/services. The UKIPO highlights examples such as ‘computer software’ in Class 9, ‘pharmaceuticals’ in Class 5 and ‘clothing’ in Class 25. However, the UKIPO also states that for some applicants, the use of these terms will be reasonable and in good faith, whilst for others, the selection of sub-categories would be ‘more appropriate.’ An objection will not be raised automatically for use of these terms, according to the PAN.

Nevertheless, aside from i. and ii., not adhering to the above guidance will not automatically lead to a bad faith objection.

If an applicant faces an objection, they will have a 2-month period to then explain the commercial rationale of the goods/services or to submit restrictions. Should the objections be maintained, an applicant can then request a hearing.

Now the PAN 1/25 is in force, use of class headings or a full alphabetical list of goods/services should be avoided.

Whilst broad terms like ‘software’ and ‘clothing’ may not automatically face objections, for applicants not wholly dedicated to these sectors (e.g. unless the applicant is a company selling numerous types of software for use across many business sectors), it may be prudent to qualify such terms to relate to specific goods or fields (e.g. accounting software).

Moving forward, UK trade mark applicants should take care to ensure the goods/services in a trade mark application more accurately reflect current and intended use plans for a trade mark.