Fresh guidance informs UK trade mark applications

The IPO recommended caution after it highlighted the risk of trade mark applications being rejected where the goods and services the applicant wants the would-be mark to be protected for are specified on too broad a basis.

The IPO’s new guidance, contained in a practice amendment notice, builds on case law developed last year by the UK Supreme Court on the issue of ‘bad faith’ trade mark registrations.

UK trade mark law provides that a trade mark shall not be registered if or to the extent that the application is made in bad faith. In addition, UK trade marks that are registered but later found to have been applied for in bad faith are liable to be invalidated.

In a ruling in a case involving UK broadcaster, telecoms, and broadband provider Sky and SkyKick, a US supplier of email migration and cloud storage services, the Supreme Court held that businesses must be specific about the goods and services they wish to obtain trade mark rights for when applying for those rights, if they want to avoid those applications being refused or later invalidated on the basis of a ‘bad faith’ determination.

Brand protection experts at Pinsent Masons said at the time that the judgment would have an immediate and direct impact on trade mark protection strategies. Those experts said they now welcome the IPO’s new guidance.

The IPO said: “Applicants should seek registration for goods/services which represent fair and reasonable claims in the context of their businesses, for the purpose of denoting trade origin. It is not possible to precisely prescribe what will constitute bad faith when it comes to the provision of a trade mark specification. That will depend on the individual nature of the applicant’s business and their motivations for filing for the goods and services concerned. It is possible for the same specification to constitute a good faith filing for one applicant, but bad faith for another.”

To support the operation of the international trade mark system, a classification system – the Nice classification system – has been developed. The system provides for standardised categorisation and related descriptions of goods and services that trade marks can be registered for. The various goods and services are listed under class headings, which broadly describe the types of goods or services featured in the underlying class.

In its guidance, the IPO said using class headings or other general terms to describe the goods or services that trade marks should apply to, may present a risk of a ‘bad faith’ determination for some brand owners filing UK trade mark applications.

The IPO further confirmed that its examiners will now raise bad faith objections where they consider the specification of goods and services in a trade mark application to be "manifestly and self evidently broad".

The IPO provided particular guidance about when examiners may issue objections. These include when applicants file claims covering vast numbers of goods and services in large numbers of classes, or when the terms used to describe the applied-for goods and services are themselves broad. It also includes when class headings are specified, particularly where class headings are used across a multitude of different classes, or where general terminology, such as computer software, pharmaceuticals, clothing, is used.

An automatic objection will be raised to applications that cover all 45 classes, as will attempting to cover all goods in class 9, which covers goods ranging from “breathing apparatus for underwater swimming” to “apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity”.

If examiners raise an objection, applicants will have an opportunity to either explain the commercial rationale for their applied-for specification or narrow the terms covered to meet the requirements for registration.

Brand protection expert Florian Traub of Pinsent Masons said: “The IPO’s practice amendment notice will have a significant impact on the practice of drafting and prosecuting trade mark applications in the UK going forward. Whilst the IPO stopped short of banning general terms like ‘software’ altogether, the IPO’s guidance strongly hinted that applicants will find it more difficult to get trade marks covering general terms in their specification registered in the future. What is more, the guidance will also have an impact on pending and future opposition or cancellation proceedings where bad faith has been pleaded.”

Gill Dennis, also of Pinsent Masons, added: “Having a clear commercial rationale for the trade mark protection being sought will be central to whether a bad faith objection can be overcome. Trade mark applicants, particularly those seeking objectively broad protection, must now clearly document this as a matter of best practice so that they can refer to it later should that become necessary.”