The UK IPO has issued a direction to provide Applicant’s with clarity on how they should draft specifications when filing new trade mark applications.
The IPO’s Deputy CEO and Director of Services Andy Bartlett said:
“Following the Supreme Court’s judgment in the ‘Skykick’ case, we are issuing guidance to provide greater clarity and certainty for trade mark applicants and their representatives”
“The ruling represents a significant development in trade mark law, and this Practice Amendment Notice explains what is expected from applicants, and how our examination practices will change as a result.”“Understanding these changes will help our customers prepare appropriate specifications and avoid potential challenges and unnecessary delays in the application process.”
A link to the full text of the practice direction is set out below:
If a trade mark application is filed with an overly broad specification of goods and services there can be a finding that the application was filed in ‘bad faith’.
To initially obtain a trade mark registration in UK there is no requirement that the mark must be used on the goods and services covered by the trade mark application. This therefore means that sometimes Applicant’s file trade mark applications broadly for goods and services they have no intention of ever using the mark on.
As trade marks are a monopoly right and use provisions do not kick in for 5years (meaning a registration cannot be challenged for non-use for 5 years) then once the application is registered the Applicant can use it to prevent others registering and using the same or similar mark for the same or similar goods or services even in relation to goods or services which the Applicant had no intention of using the mark on but filed very broadly for.
Key points to consider following the Court ruling and the Practice Amendment:
1. Care must be taken when drafting specifications of goods and services on filing a trade mark application
2. Try to avoid filing too broadly. This includes filing an application that covers all 45 classes.
3. The UK IPO will raise an objection to the full class 9 class heading.
4. The UK IPO will now routinely raise bad faith objections if they believe the specifications are too broad.
5. Relying on broad specification in cancellation action or oppositions may lead to a counter claim on bad faith grounds.
Please note however, If an objection based on ‘bad faith’ is raised by the UK IPO Examiner then the Applicant can provide the UK IPO with their commercial rationale for filing so broadly, and argue against the objection if they believe the objection is not justified.
Please contact us for any specific advice on filing trade mark applications.