UKIPO pressure mounts following SkyKick bad faith ruling

Given that the UKIPO is already facing a significant workload, could SkyKick hold up decisions from the office even further?

"Whilst guidance from the Registry on its practice following SkyKick is awaited, it is fair to say that the decision is likely to result in an increase in the Registry’s workload and, therefore, hold up decisions from the office even further.

"It seems inevitable that there will be a sharp increase in the number of oppositions and invalidity actions initiated at the Registry on the ground of bad faith. It is also understood that a number of UKIPO tribunal cases were already on hold pending the Supreme Court’s decision and will now need to be processed accordingly.

"As far as trade mark examination is concerned, it is expected that, following SkyKick, the Registry will be required to scrutinise the list of goods and services of an application in greater detail, looking in particular for terms that are over-broad and therefore potentially applied for in bad faith and liable to be refused on the absolute ground contained in section 3(6) of the Trade Marks Act 1994. So the examination process will take longer."

If so, will this change client behaviour?

"It really depends on how significant the delays turn out to be.

"However, an opponent or invalidity applicant may feel that alleging bad faith is a smart tactical move, since (a) the trade mark applicant may now be required to justify its goods and services in its defence and (b) it will take longer for the trade mark to reach registration. Therefore, it seems is likely that a well-advised trade mark applicant will exercise caution in its application, and limit its goods and services to those it can justify commercially, if it wants to obtain a registration promptly."

Will we see more trade mark challenges emerging in the High Court first?

"Yes. It seems likely that where there is a trade mark infringement claim based on an existing (pre SkyKick) registration, defendants will be encouraged by SkyKick to counterclaim for invalidity of the trade marks relied upon, on the ground of bad faith. This will place the burden on the claimant to justify the breadth of its goods and services relied upon."

An extract of Jim's comments was published in Law360, 2020 November 2024, and can be found here.