Merger Announcement: ENERGI and SkyKick Combine Forces to Expand Cloud Migration Services
In response to the Supreme Court's judgment in the SkyKick UK Ltd v Sky Ltd case, the UK Intellectual Property Office (UKIPO) has issued new guidance to help trade mark applicants draft their specifications more carefully to avoid challenges for bad faith due to overly broad specifications. This guidance is outlined in Practice Amendment Notice 1/25 (PAN 1/25).
## Key Points in PAN 1/25
1. **Bad Faith Objections**: UKIPO examiners will now more readily raise bad faith objections against applications with specifications that are deemed "manifestly and self-evidently broad." This means that if an applicant seeks protection for goods or services that are not genuinely intended to be used under the mark, they may face a bad faith challenge.
2. **Broad Terms**: While there is no outright ban on broad terms like "computer software" or "pharmaceuticals," applicants must ensure that their specifications are aligned with their genuine business intentions.
3. **Reasonable Business Intention**: Applicants need to demonstrate a reasonable business intention to use the mark across all claimed goods or services. This includes providing explanations and justifications for why such broad protection is necessary.
## How Applicants Can Avoid Challenges
To avoid bad faith challenges, applicants should consider the following:
- **Tailored Specifications**: Ensure that trade mark specifications are specific and aligned with the applicant's genuine business activities and future plans.
- **Avoid Overly Broad Claims**: Be cautious with broad terms and ensure that the goods or services listed are genuinely intended for use under the mark.
- **Auditing Existing Registrations**: Brand owners with existing registrations should consider reviewing their portfolios to ensure compliance with the new guidelines and to avoid potential invalidation due to bad faith.
By balancing protection with realistic business intentions, applicants can reduce the risk of challenges for bad faith while still protecting their core business activities and future innovations. This new guidance serves as a warning for brand owners to carefully consider the appropriate coverage of their registered trade mark protection to avoid challenges for bad faith.
The impact of the SkyKick decision applies not just to new applications, but also to existing registrations, which can be invalidated for bad faith. Therefore, it is crucial for brand owners to review their existing trade mark portfolios to ensure compliance with the new guidelines. Our Specification drafting: a quick guide can help in the process of initial trade mark protection.
The decision also highlights the importance of providing evidence of use for existing registrations during opposition proceedings. For instance, in the case of Cashflow Corporation Ltd vs SE Bicycles Company Ltd, the opponent failed to prove use of its older registrations, despite having earlier rights in various ENERGI trade marks.
In conclusion, the UKIPO's new guidance aims to clarify how applicants should draft trade mark specifications to avoid challenges for bad faith due to overly broad specifications. By adhering to these guidelines, applicants can ensure that their trade mark applications are more likely to be successful and avoid costly side actions about bad faith.
- In the realm of technology, it's essential for innovators in the field of software development to draft precise trade mark specifications to align with their genuine business activities to avoid bad faith challenges from the UK Intellectual Property Office (UKIPO).
- As media outlets broaden their coverage and extension into various energy-intensive areas like digital platforms, it's crucial to demonstrate a reasonable business intention to use the mark across all claimed services to avoid bad faith objections.
- To sustain a competitive edge in the sports industry, it's recommended for brand owners to audit their existing trademark registrations to ensure compliance with the new guidelines to prevent potential invalidation due to bad faith challenges and maintain a secure foundation for future innovations.
