All Unite for bad faith rulings

The first was an opposition brought by Unite the Union against UK trade mark application no. 3567245 for UNITE FAITH WORKERS' FELLOWSHIP, applied for by Anglican Foundation (the "Unite Mark").  In its decision of 17 April 2025, the UKIPO upheld the opposition.  This appears to be the first time the UKIPO has applied, in opposition or cancellation proceedings relating to broad specifications, the Supreme Court's November 2024 decision in Sky v SkyKick. 

The second followed swiftly; the decision of 9 May 2025 by the same Hearing Officer (Arran Cooper) upheld a similar opposition, this time to UK trade mark application no. 3792336 for ENERJO, applied for by Cashflow Corporation (the "Enerjo Mark").

The Unite Mark was applied for in class 35 for a specification running to 46 pages in the decision as issued, listing a "very broad and disparate" range of services.  The Enerjo Mark was applied for in 13 classes for a "very wide range of disparate goods and services" running to 128 pages in the decision as issued.

In both cases, the applicants for the marks filed counterstatements in the opposition proceedings denying that the marks had been applied for in bad faith, but provided no evidence to demonstrate either their intentions at the time of filing the applications or the nature and extent of their businesses.  Neither applicant provided written submissions in lieu of a hearing. 

The decisions, insofar as they relate to s3(6) Trade Marks Act 1994 (the Enerjo Mark decision also considers other grounds of opposition), are couched in very similar terms (as one might expect – indeed, to the casual observer it appears there has been some cutting and pasting from the first decision to the second).

The Hearing Officer ("HO") has structured the decisions carefully and helpfully, which provides a clear blueprint on how these issues should be dealt with going forward.

General principles applicable to bad faith

First of all, one should consider the general principles applicable to bad faith summarised by Lord Kitchin SCJ at paragraph 240 (paraphrased here):

• the date for assessing whether an application to register a trade mark was made in bad faith is the date the application for registration was made;
• "bad faith" is ordinarily understood to involve a dishonest state of mind or intention, and in the context of trade marks it must be considered in the light of the objectives of the trade mark system, being a system of undistorted competition which enables undertakings to attract and retain customers by the use of signs without the possibility of confusion as to origin of goods or services;
• bad faith will be made out where the proprietor made the application for registration, not with the aim of engaging fairly in competition, but either (a) with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties; or (b) with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, and in particular the essential function of indicating origin;
• while the intention of the applicant is a subjective matter, it is established objectively having regard to the objective circumstances of the case, and whether the applicant was acting in bad faith must be the subject of an overall assessment, taking into account all of the factors relevant to the particular case;
• the burden of proving that an application was made in bad faith lies on the party making the allegation, but where the circumstances of the case lead to a rebuttal of the presumption of good faith, it is for the applicant to provide a plausible explanation of the objectives and commercial logic behind the application;
• the applicant for a trade mark is not required to indicate or to know precisely, when the application is filed or examined, the use that will be made of it;
• nevertheless, the registration by an applicant of a mark without any intention to use it in relation to the goods and services covered by the registration may constitute bad faith where there is no rationale for the application;
• to find bad faith there must be objective, relevant and consistent indicia tending to show that, when the application was filed, the applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark;
• the bad faith of the applicant cannot be presumed on the basis of a mere finding that, at the time of filing the application, the applicant had no economic activity corresponding to the goods and services referred to in the application;
• a lack of intention to use the mark in respect of some goods or services for which it is applied constitutes bad faith only in relation to those goods or services;
• even where the relevant rules and conditions for obtaining registration have been observed, if the court concludes that the purpose of the rules has not been achieved, and that there was an intention to take advantage of the rules by creating artificially the conditions laid down for obtaining the registration, this may amount to an abuse sufficient to find that the application was made in bad faith;
• when filing a UK mark the applicant is required to state that they are using or have a bona fide intention to use the trade mark.  Where that statement has been falsely given or is otherwise infringed, that is not a ground for invalidity but can constitute evidence of bad faith. 

Bad faith and broad specifications

With those principles in mind, the HO went on to consider the Supreme Court's ruling on one of the aspects of bad faith which was central in the SkyKick case – that relating to broad specifications.

He noted first that bad faith must be proved on the balance of probabilities; "[t]this means that it is not enough to establish facts which are as consistent with good faith as bad faith".  One should then look at the specification applied for. 

In both cases the opponents argued that the specification was so broad that the applicants cannot have intended to use the marks for all of the goods and services listed. The HO agreed, first referencing Lord Kitchin SCJ in SkyKick at paragraphs 252 – 254:

• If an applicant fails to "provide a reasonable explanation and justification for its actions", it is "open to the tribunal to find that the application was indeed made in bad faith";
• Where a mark has a very broad specification (the example given by Lord Kitchin SCJ was a mark applied for in respect of all 45 classes of goods and services), "the width and size of the specification would, absent a satisfactory explanation, justify a finding of abuse on the basis that the applicant had intentionally taken advantage of the rules by creating artificially the conditions laid down for obtaining a registration with unduly wide protection";
• "Once that proposition is established … then it must be a matter of degree whether the objective circumstances, that is to say, the width and size of the specification of goods and services and their nature, as compared to the size and nature of the applicant’s business (or lack of it) are such as to rebut the presumption of good faith and so justify the conclusion that the application was filed, at least in part, for a purpose other than in connection with the proper functions of a trade mark, that is to say to denote the origin of the goods or services to which it is applied".

Given the breadth and disparate nature of the specifications, a prima facie case of bad faith had been made out in each case.  That reversed the burden of proof so that it was for the applicants to rebut the prima facie case. 

However, as mentioned above, neither applicant had provided either a proper explanation of their intentions when filing the marks, or of the scope of their business. 

Absent these explanations, it was "difficult to imagine that one business would use a trade mark to indicate to customers that it is responsible for services as varied as those in the specification at issue. The sheer breadth of the specification is sufficient to call into question whether the applicant had an intention to use the trade mark in accordance with its essential function in relation to all of the services in the application" (this is from the Unite case; the Enerjo case replicates this wording save for the addition of "goods").

The HO held that both the Unite Mark and the Enerjo Mark had been filed in bad faith and the oppositions succeeded against all goods and services.

Comments

The Supreme Court's guidance on bad faith in respect of broad specifications (and broad terms although this was not considered in the present cases) is set out clearly in the SkyKick decision and it is good to see it being applied methodically.  Practitioners and brandowners were hoping for clear and practical guidance from SkyKick and the ease with which the Hearing Officer in these cases applied the guidance suggests that this is indeed what has been given. 

We are aware of five more UK oppositions and cancellation actions which were stayed pending the outcome of SkyKick, and are hopeful that these will be similarly clearly decided. 

As far as these particular cases are concerned, one learning is that the applicants may have been in a better position had they submitted evidence and arguments demonstrating both their intentions at the time of filing and the nature and extent of their businesses.  It seems unlikely that, even had such evidence been filed, the applications in their entirety would have been allowed to proceed to registration, but they may have been able to save some of the goods/services applied for.  Without this, it was impossible for the tribunal to compare the breadth of the specification with the applicants' business intentions, and it was impossible for the applicants to provide the plausible explanation and justification for the broad specifications which was required for them to rebut the presumption of bad faith.