New UKIPO Practice Amendment on overly broad specifications and bad fa

The PAN states that the UKIPO may now object to trade mark applications which include overly broad terms, or unduly long lists of goods/services, if it believes that those terms were included in bad faith (i.e. if the list of goods and services is not fair, or reasonable, in the context of the applicant’s business).

The circumstances of each application will be different, and therefore the UKIPO cannot set any firm rules as to exactly what will, and will not, lead to a bad faith objection. However, there are a couple of circumstances that will inevitably lead to a bad faith objection being raised:

Filing in all 45 classes;
Filing for all goods in Class 9 (a very broad class covering a diverse range of goods from fire extinguishers to sunglasses).

Other factors that will be considered by the UKIPO when assessing the fairness and reasonableness of the list of goods and services include:

If the application includes vast numbers of goods and services in large numbers of classes;
Use of class headings across multiple classes;
Use of terms that are overly broad by their nature, such as ‘computer software’ in Class 9, ‘pharmaceuticals’ in Class 5, and ‘clothing’ in Class 25, for example.

Filing for broad terms like these will not automatically lead to an objection; however, applicants should consider whether sub categories might better capture how the mark is intended to be used.

If the UKIPO raises an objection, the applicant will have a 2-month period to either explain the commercial rationale behind the inclusion of the objectionable goods/services or submit restrictions. Should the objections be maintained, the applicant can appeal or request a hearing.

It is recommended that you get in touch with UK qualified trade mark attorneys when filing new applications to ensure that objections are not received. Keltie can assist with the drafting of suitable specifications and responding to refusals.

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David Yeomans

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