The UKIPO kicks into action with a new Practice Amendment Notice following SkyKick

Keeping abreast with the consequences of the Supreme Court’s recent judgement in Sky v SkyKick[1], as reported by us here[2], the UKIPO has recently released Practice Amendment Notice (“PAN”) 1/25[3].

In which, the UKIPO explains the changes in how it will now examine trade mark specifications going forward. For the avoidance of doubt, these changes took effect on 27 June 2025, the published date of the PAN.

Bad faith

In the landmark case linked above, the Supreme Court ruled that an overly broad specification could create an inference of bad faith upon the applicant. This judicial precedent has now been imputed into the examination stage of trade mark applications at the UKIPO.

The changes at the examination stage

UKIPO examiners will now actively look out for bad faith objections where a specification is deemed “manifestly and self-evidently broad“. Previously, this was not something that examiners considered. The PAN does not advise on when a specification would satisfy that definition, but it does go on to confirm that an automatic objection would be raised by examiners whenever a specification has listed all 45 classes or listed all goods in class 9.

Further, the PAN confirms that examiners will not automatically raise objections to broad terms such as “computer software” or “clothing” but warns applicants to be cautious in using such terms.

Apart from the above explicit examples, examiners are given quite some flexibility to raise bad faith objections, and only time will tell until we get an idea of what “manifestly and self-evidently broad” means to the UKIPO.

It is interesting to note that the commercial background of the applicant is a factor in determining whether a bad faith objection is to be raised. To that end, the PAN notes that a given specification could reflect a good faith application by one applicant but not another. The amount of scrutiny that an examiner will give to the commercial background of applicants remains to be seen.

What happens when a bad faith objection is raised?

If an examiner does raise a bad faith objection, two months will be given to file a response. Whereby applicants must explain their commercial rationale for such a wide specification and/or limit the specification to better reflect their commercial realities.

Final thoughts

Although brief in wording, this latest PAN ushers in a sea change at the examination stage for applications at the UKIPO. Gone is the laissez-faire approach to some elements of prosecution that we were once used to, and it will be interesting to see whether the PAN changes encourage the UKIPO to go further for an even more actively managed examination stage.

[1] SkyKick UK Ltd and another (Appellants) v Sky Ltd and others (Respondents) [2024] UKSC 36

[2] https://staging.vennershipley.com/insights-events/the-skys-the-limit-the-supreme-court-provides-guidance-on-bad-faith-filings/

[3] https://www.gov.uk/government/publications/practice-amendment-notice-125/pan-125-required-behaviour-and-the-impact-on-examination-practice-following-the-supreme-courts-judgment-in-skykick-uk-ltd-and-another-v-sky-ltd-a