UK Intellectual Property Office Updates Guidance on Trade Mark Applications

On June 30, 2025, the UK Intellectual Property Office (IPO) released new guidance regarding trade mark applications, advising brand owners to exercise caution when utilizing general terminology or class headings to describe the goods or services for which they seek protection. The IPO's guidance follows a significant ruling by the UK Supreme Court which emphasized the importance of specificity in trade mark applications to avoid rejections based on 'bad faith' determinations.

The Supreme Court's decision, stemming from a case involving Sky and SkyKick, highlighted that applications made in bad faith are not eligible for registration and may be invalidated if found to have been made on overly broad grounds. Florian Traub, a partner at Pinsent Masons, noted that this ruling has already begun to influence the strategies of businesses seeking trade mark protection.

According to the IPO, applicants must now provide descriptions that reflect fair and reasonable claims relevant to their businesses. This means avoiding overly broad terms that could lead to objections based on bad faith. Gill Dennis, Senior Practice Development Lawyer at Pinsent Masons, reiterated that demonstrating a clear commercial rationale for the sought protection is essential to overcoming potential objections.

The IPO also specified that it would raise objections against applications that are excessively broad, such as those covering numerous classes or using general terms like 'software' or 'pharmaceuticals.' Applications encompassing all 45 classes or generalizing class 9 goods are automatically objectionable. The guidance urges applicants to narrow their specifications or provide justifications to support their claims.

This updated guidance aims to enhance the integrity of the UK trade mark system by ensuring that applications are specific and well-founded. In light of the recent judicial interpretations, it also serves to align UK practices with international standards, including the Nice Classification System, which categorizes goods and services for trade mark registration.

As businesses adapt to these new requirements, the IPO aims to mitigate the risks associated with bad faith claims and foster a more transparent and reliable trade mark registration process. Experts predict that these changes will significantly shape the drafting and prosecution of future trade mark applications in the UK, highlighting the necessity for precise documentation and rationale in brand protection strategies moving forward.