Associate Jennifer Scott, in our Corporate & Commercial team explores the new trade mark guidance that has emerged following landmark case, SkyKick, and what this will mean for businesses.
What is UK IPO PAN 1/25?
The UK Intellectual Property Office (UK IPO) issued a Practice Amendment Notice (PAN1/25), providing updated guidance on trade mark specifications following the Supreme Court’s decision in SkyKick UK Ltd v Sky Ltd.
This new statutory guidance addresses bad faith in trade mark applications, particularly where an applicant’s list is overly broad or has unrealistic specifications. The UKIPO will now scrutinise trade marks more closely during examination - and raise objections where bad faith is suspected.
SkyKick v Sky and Bad Faith in Trade Marks
In the landmark case SkyKick UK Ltd v Sky Ltd, the UK Supreme Court ruled that applying for a trade mark over goods or services without genuine intention to use the same may be deemed bad faith. The statutory guidance quotes the essence of bad faith as set out in paragraph 153 of the judgment:
“…that the motive or intention of the applicant was to engage in conduct that departed from accepted principles of ethical behaviour of honest commercial practices having regard to the purposes of the trade mark system.”
The Court criticised ‘excessively broad’ terms that can’t realistically reflect the applicant’s commercial activity. This decision has reshaped how trade marks are assessed and challenged in the UK.
What does this mean for Trade Mark Applicants?
PAN 1/25 confirms that IPO examiners will now:
- Challenge broad or vague trade mark specifications.
- Request justification if terms like ‘computer software’ or entire class headings are used.
- Raise objections if they suspect the application was filed in bad faith.
Applicants who receive a bad faith objection will generally have 2 months to:
- Justify their broad specification (with evidence), or
- Narrow the scope of goods/services listed in the application.
Why does this Matter for Businesses?
Thames Valley is home to some of the UK’s fastest growing tech, life sciences, and creative businesses. These sectors often file trade marks to protect anticipated innovation or expansion.
Under PAN 1/25, speculative filings can now lead to refusal - unless there’s a credible commercial plan to support them. This shift especially affects:
- Startups and scale ups using wide coverage as a defensive tool.
- Tech firms using generic Class 9 terms like ‘software’.
- Global portfolios where consistency must balance with UK specificity.
How to Prepare Trade Mark Applications in 2025
To avoid delays or refusals, trade mark applicants should:
- Use specific, commercially relevant terms (e.g. ‘CRM software for insurance brokers’ instead of ‘software’), to avoid terms being too broad.
- Avoid full class headings unless fully justified with evidence to rebut any objection.
- Document intent to use each term in the specification.
- Prepare to explain commercial rationale if challenged that shows the application is ‘fair and reasonable’ in the context of your business.
The Corporate and Commercial team at Blandy & Blandy work with start ups, innovators, founders, and brand owners to ensure their trade marks are legally robust and commercially strategic. Our team can:
- Advise on and prepare trade mark applications.
- Draft specifications tailored to your actual and intended use.
- Respond to UKIPO objections under PAN 1/25.
For further information or legal advice, please contact law@blandy.co.uk or call 0118 951 6800.
This article is intended for the use of clients and other interested parties. The information contained in it is believed to be correct at the date of publication, but it is necessarily of a brief and general nature and should not be relied upon as a substitute for specific professional advice.
