Key Takeaways:
- Stick to What You Know: Ensure that the specification reflects actual or genuinely intended use to enhance user experience.
- Avoid Defensive Overreach: Filing broad specs solely to block competitors or secure bargaining chips can now backfire.
- Prepare to Justify: If challenged, be ready to explain the commercial rationale for the application.
- Context Matters: Tribunals will consider surrounding facts, including the applicant’s conduct and motives.
As the 68:32 audience poll at a recent IP conference predicted, SkyKick is already reshaping trade mark filing behaviour. If this decision is any indication, we can expect to see a reduction in applications containing long and unfocused specifications—and a growing number of oppositions on bad faith grounds.
The Supreme Court’s landmark ruling in SkyKick UK Ltd v Sky Ltd
In the aftermath of the Supreme Court’s landmark ruling in SkyKick UK Ltd v Sky Ltd ([2024] UKSC 36), the intellectual property landscape in the UK has shifted significantly. One of the key takeaways from SkyKick was the affirmation that filing a trade mark application without a genuine intention to use the mark across all the goods and services listed can amount to the issue of bad faith. The UKIPO has wasted no time in applying this precedent, as demonstrated in a recent Opposition Division decision: Unite the Union v Anglican Foundation (O/0369/25).
This decision is a clear application of SkyKick in practice and offers valuable insights into how the UKIPO will assess long specifications of goods and potential abuse of the trade mark system. It serves as a cautionary tale for trade mark applicants who seek protection for unnecessarily broad or commercially unjustifiable lists of goods and services.
Background of the Case
On 13 December 2020, Anglican Foundation applied to register the mark “Unite Faith Workers’ Fellowship” for a vast range of services in Class 35. The specification spanned 47 pages, covering services from accounting and advertising to xerography and retail of sorbets. The mark was published for opposition on 12 February 2021.
Unite the Union opposed the application on several grounds: sections 5(2)(b), 5(3), 5(4)(a), and crucially, 3(6) of the UK Trade Marks Act 1994. The opposition was particularly focused on bad faith, contending that the application was filed not to engage in fair competition but to disrupt and undermine the opponent’s interests.
According to the opponent, Anglican Foundation’s directors were previously involved with the opponent’s “Unite Faith Workers” branch and were engaged in a dispute regarding alleged discrimination. The opponent alleged that the application was part of a broader campaign to interfere with their operations, including the misuse of the term “Unite” to create confusion among consumers and union members.
Overview of Trademark Bad Faith in Legal Context
The concept of bad faith in the realm of trademarks is nuanced and critical for ensuring fair competition. In essence, bad faith refers to the intention of an applicant to misuse the trademark system by applying for a mark without a genuine intention to use it in commerce, particularly undermining the interests of third parties. Good faith, on the other hand, embodies the ethical obligation of applicants to act honestly and transparently when filing for trademark protections. The distinction between bad faith and good faith is paramount; a trademark application made in bad faith by a trade mark owner can lead to invalidation, as it undermines the integrity of the trademark system and the rights of legitimate businesses.
The SkyKick ruling has reinforced the importance of establishing a clear intention associated with trademark applications, setting a precedent that applications lacking such intentions may be scrutinised and potentially rejected.
The legal framework surrounding bad faith, derived from both EU and UK law, is influenced by the Trade Marks Directive and specific provisions under the Trade Marks Act 1994, highlighting that a trademark shall not be registered if the application is made in bad faith. The legal framework established by the courts has interpreted bad faith to involve conduct that deviates from accepted ethical standards in commercial practices. It is a subjective determination that requires an objective assessment of the circumstances surrounding the application, ultimately aiming to preserve the integrity of the trademark register and protect genuine market participants from deceptive practices.
UKIPO’s Approach: Bad Faith First
Following the opponent’s suggestion, the UKIPO began its analysis with the bad faith ground under section 3(6) and the possibility of an invalidity action. As the Supreme Court in SkyKick made clear, the relevant date for assessing bad faith is the filing date of the application. If, at that time, the applicant lacked a bona fide intention to use the mark, or if the application was made with the aim of undermining third parties, the application can be invalidated in whole or in part, as determined by an appointed person.
The Registrar adopted the analytical framework set out in SkyKick, focusing on whether the applicant pursued an objective inconsistent with the proper functions of a trade mark. Importantly, the decision reiterated that the burden of proving bad faith rests on the opponent, but once a prima facie case is established, it shifts to the applicant to justify their intentions.
A Specification Too Far
The most striking feature of this case was the sheer breadth and volume of the specification, including a maximum storage duration detail. Spanning nearly 50 pages, the applicant sought to register the mark for an almost bewildering array of Class 35 services, including: optimising response times.
• Accounting services for farming enterprises
• Auctioneering of livestock
• Gas meter reading for billing
• Retail services in relation to sex aids
• Shop window dressing
• Wholesale services in relation to sorbets
The UKIPO viewed this as excessive and implausible. There was no explanation or supporting evidence from the applicant to justify such a wide claim. While the applicant’s counterstatement mentioned that the organisation had over 250 members and was involved in theological research and events, it did not provide any details connecting those activities to the majority of the services listed.
The tribunal concluded that the specification bore no reasonable connection to the applicant’s actual or intended business activities, which seemed to centre around faith-based advocacy and theological research. As such, it was evident that the application lacked a genuine commercial rationale and was inconsistent with the essential function of a trade mark: to denote the origin of goods or services.
Undermining a Competitor
Beyond the overly broad specification, the UKIPO also considered the context in which the mark was filed. The evidence submitted by the opponent demonstrated that the applicant’s key figure, Reverend Dr David Isiorho, had a history with Unite the Union. He was previously a branch secretary of the very organisation he now appeared to be targeting.
Web pages, social media accounts, and newsletters created by the applicant all referred to ongoing disputes with Unite the Union and included critical commentary about the organisation. Some even displayed Unite’s existing marks. The UKIPO considered this to be strong evidence of an intent to interfere with and undermine the opponent’s operations.
The tribunal cited previous case law confirming that an application made through a company controlled by a person engaged in a campaign against the opponent may still be found to be made in bad faith regarding the registration of a trade mark. The key was the applicant’s lack of a genuine intention to use the mark for proper commercial purposes.
Applying the SkyKick Supreme Court Criteria
• Bad faith includes both dishonest intention and conduct inconsistent with honest practices in industrial or commercial matters, as highlighted by considering all relevant circumstances in Skykick UK Ltd and Another V Sky Ltd and Others EWCA Civ 1121.
• Bad faith includes both dishonest intention and conduct inconsistent with honest practices in industrial or commercial matters, as highlighted in Skykick UK Ltd and Another V Sky Ltd and Others EWCA Civ 1121.
• Filing for an unduly broad specification without justification, such as in the category of ‘computer software’, can constitute abuse.
• A finding of bad faith may follow if the applicant fails to provide a credible explanation when faced with a prima facie case.
In this case, the tribunal found that both the broad specification and the surrounding facts gave rise to a prima facie case of bad faith. The applicant failed to rebut this case, having made only a general statement in its counterstatement and no further submissions or evidence.
Detailed Analysis of the Supreme Court’s Decision on UKIPO Bad Faith
The Supreme Court’s decision in the SkyKick case has profound implications for the interpretation of bad faith in trademark applications. The ruling underscored that the relevant date for assessing bad faith is the date of the application itself, emphasizing that the intention of the applicant must be evaluated contextually. The UK Supreme Court clarified that a lack of genuine intention to use a trademark for the specified goods and services could constitute bad faith, particularly when the application appears to be an attempt to gain an unfair advantage over competitors, reinstating the High Court’s earlier ruling. This interpretation aligns with the Court’s commitment to fostering honest commercial practices in the trademark system.
In reiterating the principles of bad faith, the Supreme Court’s ruling established that the burden of proof lies with the party alleging bad faith, although it shifts to the applicant once a prima facie case is established. The Court’s analysis demonstrated that the mere absence of an intention to use a mark for all listed goods and services could lead to inferences of bad faith if the applicant fails to provide a satisfactory rationale for their broad claims. This evaluation will depend on all the circumstances of the case. Consequently, this decision serves as a crucial reminder for trademark applicants to ensure their registrations reflect genuine business intentions, as failing to do so may result in significant legal repercussions. This case highlights the burden of proof needed in bad faith allegations.
Outcome
The UKIPO upheld the opposition in full on the basis of bad faith. The application was refused in its entirety, and the applicant was ordered to pay costs of £1,600.
The decision also confirmed that the tribunal need not consider the remaining grounds (sections 5(2)(b), 5(3), and 5(4)(a)), since the bad faith ground was sufficient to dispose of the application.
Implications for Trade Mark Strategy
This case is a stark reminder that post-SkyKick, trade mark applicants must proceed with caution when drafting their specifications. The days of blanket applications for hundreds of unrelated goods and services are numbered. The UKIPO is clearly willing to invalidate applications that lack credible commercial logic or appear to be weaponised against competitors.
Practical Implications for Future Trademark Applications and Disputes
The SkyKick brand ruling has set a new standard for trademark applications, particularly regarding the necessity for applicants to demonstrate a clear and credible intention to utilize their marks in commerce within a year grace period. This decision is likely to influence how businesses approach their trademark filings, urging them to avoid overly broad specifications that do not align with their actual or intended business activities. Applicants should now prepare to justify their trademark applications, particularly when the listed goods or services extend beyond their core operations.
Moreover, the case has significant implications for the strategic management of trademark portfolios and trade mark registrations enforcement strategies. Businesses may need to conduct thorough assessments of their trademark classifications to ensure they are not inadvertently exposing themselves to challenges based on bad faith. The potential for increased opposition actions on these grounds means that trademark owners must be diligent in documenting their intentions and maintaining transparent practices in their trademark applications. As the legal landscape evolves in light of the SkyKick decision, businesses must adapt their trademark strategies to mitigate risks associated with claims of bad faith while still seeking broad protection for their intellectual property.
Conclusion
The Unite Faith Workers’ Fellowship decision (O/0369/25) is a powerful illustration of how the UKIPO is enforcing the principles laid down in SkyKick. Applicants must now be able to justify not only their brand names but also their intentions. Anything less may lead to defeat at the hands of the Opposition Division, as this case clearly demonstrates.
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What constitutes bad faith under UK intellectual property law?
Under UK intellectual property law, bad faith occurs when a party registers a trademark with dishonest intentions, such as to unfairly gain advantage or harm another’s business. This can involve exploiting a competitor’s brand reputation or creating confusion among consumers, undermining the principles of fair competition and integrity.
