For more on this topic:
- Understand the legal framework in the UK Supreme Court judgment on Skykick.
- Trace the development of the case from the Court of Appeal decision.
Following the Supreme Court’s decision in SkyKick v Sky¹ — on 27 June 2025, the UK IPO issued important guidance² on how it will now approach trade mark applications — and it’s a significant shift.
This article summarises what the new guidance means for trade mark applicants and businesses.
The key issue is bad faith. The judgment made it clear that filing overly broad specifications — particularly where the applicant has no genuine intention to use the mark for all the claimed goods or services — may amount to bad faith.
The UK IPO has now confirmed it will start raising objections on this basis during the examination process.
What’s changing in practice?
Examiners will now assess whether a specification is “manifestly and self-evidently broad.” If so, they may raise a formal objection. This could apply, for example, to:
- Applications covering a broad specification in Class 9, or indeed all 45 classes
- Use of vague or overly broad terms, like “computer software”, “clothing” or “pharmaceuticals”, without clear commercial justification
- Use of entire class headings without considering whether each part of that class is genuinely relevant to the business
What should applicants do differently?
Applicants should now take a much more considered approach when drafting specifications. In particular:
- Include goods and services that reflect what you currently offer, what you intend to offer, or areas you may reasonably expand into
- Avoid using broad or catch-all terms unless they are genuinely justified by your commercial plans
- Think ahead — specifications cannot be broadened after filing, only narrowed, so getting it right at the outset is critical
- Be prepared to explain the commercial rationale if challenged — and to amend the specification if necessary
What happens if an objection is raised?
Applicants will have two months to respond, either by providing a credible commercial rationale explanation or by narrowing the scope of the specification. If the IPO isn’t persuaded, the application could face refusal (at least in part), though there will still be the opportunity to request a hearing or appeal.
Are there any other changes?
The updated guidance focuses primarily on examination practice.
However, opponents and cancellation applicants before the Tribunal should also consider the updated guidance. Relying on broad specifications may lead to counterclaims on bad faith grounds. Claimants are reminded to base their case only on terms they are prepared to defend against such counterclaims.
Our view
This is a meaningful change in UK trade mark practice. The days of filing a trade mark as a “legal weapon” against third parties are much more risky.
It is important to be strategic: securing protection where it’s commercially justified and defensible.
If you’re thinking about filing a new application — or if you’re unsure whether existing filings could be vulnerable to bad faith challenge — feel free to get in touch.
This approach will come into force with immediate effect.
The full Practice Amendment Notice PAN 1/25 may be found here:
¹SkyKick UK Ltd v Sky Ltd [2024] UKSC 36
²UK IPO Practice Amendment Notice 1/25
