LIDC Congress 2023

UK National Report: What mechanisms exist to avoid overbroad trade marks and address concerns
that the trade mark registers are clogged and are these mechanisms effective?*

1 Introduction
Trade marks are an important component in the system of undistorted competition in the UK and play a
key role for traders wishing to efficiently promote and sell their goods and services in the marketplace.
However, in the last decade, the issue of overbroad trade marks and clogged trade mark registers has
received considerable critical attention from academics, practitioners and the United Kingdom
Intellectual Property Office (‘UKIPO’). 1 Johnson explains that overbroad trade marks may engender
uncertainty in terms of scope of protection and hence increased costs for third parties wishing to
register new trade marks as additional steps are required for the purposes of trade mark clearance. 2
Research by the UKIPO addressing the cluttering and non-use of trade marks in Europe (‘2015 UKIPO
Report’) suggests that trade mark clogging potentially blocks market entry for new products. 3 The 2015
UKIPO Report compared applications and registrations made with the European Intellectual Property
Office (ex OHIM) and the UKIPO with those made at the level of the United States Patent and Trademark
Office.4 The Report concludes that there ‘is arguably much stronger evidence for the extent of probable
non-use of marks that are registered in Europe’. 5 Recognizing the problems associated with overbroad
trade marks and non-use clogging in Section 2 below examines three mechanisms contained in the
Trade Marks Act 1994 (‘TMA 1994’) that can be used to avoid the registration or maintenance on the
register of marks not used or likely to be unused for some or all of their claimed goods/services. Next,
Section 3 includes a discussion of the effectiveness of the anti-clogging mechanisms described in Section
2, by reference to the statistical data reported by the UKIPO in 2022 in respect of national trade mark
registrations and applications. Lastly, the conclusion in Section 4 gives a summary and critique of the
findings in this report and identifies areas for further research.

2 Mechanisms to avoid over broad trade marks and non-use clogging

2.1 Terminological note

The notions of ‘over-broad trade marks’ or ‘trade mark cluttering’ are not defined by the TMA 1994. The
2015 UKIPO Report defines ‘over-broad trade marks’ as ‘applications and registrations for marks not

1
* Prepared by Dr Luminita Olteanu, Fellow in Law, LSE Law School

Georg von Graevenitz, Christine Greenhalgh, Christian Helmers and Philipp Schautschick, ‘Trade Mark Cluttering: An
Exploratory Report’ (UKIPO, April 2012) <https://assets.publishing.service.gov.uk/government/uploads/system/uploads/
attachment_data/file/312092/ipresearch-tmcluttering.pdf> accessed 2 April 2023; Georg von Graevenitz, Richard Ashmead and
Christine Greenhalgh, ‘Cluttering and Non-Use of Trade Marks in Europe’ (UKIPO, August 2015)
<https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/568675/
TM_cluttering_report.pdf> accessed 2 April 2023; Phillip Johnson, ‘“So Precisely What Will You Use Your Trade Mark for?” Bad
Faith and Clarity in Trade Mark Specifications’ (2018) 49 IIC 940; Darren Meale, ‘SkyKick: a disappointing end to an exciting
series of events’ (2020) JIPLP 15(4) 232; Barton Beebe, ‘Is Europe Running out of Trademarks?’ (13th Annual Sir Hugh Laddie
Lecture, London, November 2021); Lynne Chave and Robin Jacob, Robin, ‘Registered Trade Marks - A System in Crisis and
What's to be Done?’ (2022) IPQ 4 169.
2
Johnson (n 2) 943.
3
von Graevenitz, ‘Trade Mark Cluttering: An Exploratory Report’ (n 1) 11.
4
von Graevenitz, ‘Cluttering and Non-Use of Trade Marks in Europe’ (n 1) 21.
5
von Graevenitz, ‘Cluttering and Non-Use of Trade Marks in Europe’ (n 1) 70.
used nor likely to be used for some or all of their claimed goods/services’. On the other hand, the
notions of ‘trade mark cluttering’ or ‘trade mark clogging’ are used in the Report to refer to either
‘volume-clutter’ or ‘non-use clutter’. Specifically, volume-cluttering is described as ‘the increasing
volume of the effective UK register, argued to create volume-clutter in terms both of numbers of
registrations and of goods/services scope’.6 In contrast, non-use-clutter is generally understood to refer
to situations ‘[…] where the trade mark registry contains trade marks that are overly broad or unused,
which can raise search costs for later applicants’.7 For the purpose of writing this report, I have adopted
the definitions of ‘over-broad trade marks’ and ‘trade mark cluttering’ contained in the 2015 UKIPO
Report.

2.2 Lack of intention to use the trade mark as bad faith

In some circumstances, the lack of intention to use the trade mark for all or part of the goods and
services mentioned in the specification may constitute bad faith and thus lead to the refusal of the trade
mark registration. Under UK law, bad faith is an absolute ground for refusal of registration having its
origins in the European Union trade mark directives harmonising Member States’ national trade mark
laws.8 S3(6) TMA 1994 provides that a trade mark is refused registration ‘if or to the extent that the
application is made in bad faith’. Bad faith can be raised by the UKIPO examiner during the examination
stage,9 by any interested parties following the publication of the application in the opposition period or,
as I will describe below, in invalidity proceedings.

The notion of ‘bad faith’ is not defined by the TMA 1994 nor by the EU trade mark legislation.
Nonetheless, the meaning of this concept has been developed through case law. Notably, Lindsay J in
Gromax Plasticulture Ltd v Don & Low Nonwoven Ltd10 explained that:

‘[…] it includes dishonesty and, as I would hold, includes also some dealings
which fall short of the standards of acceptable commercial behaviour observed
by reasonable and experienced men in the particular area being examined’. 11

In Lindt,12 the Court of Justice of the European Union (‘CJEU’) provided a list of three criteria to be
considered when assessing whether a trade mark has been registered in bad faith. These are: (i)
knowledge of the applicant that a third party is using an identical or similar sign for identical or similar
goods capable of being confused with the sign for which registration is sought; (ii) its intention to enjoin
that third party from continuing to use that sign; and (iii) the degree of legal protection enjoyed by the
third party’s sign and by the sign for which registration is sought. 13 The Lindt test, as subsequently
applied by the UK courts, 14 confirmed that in determining whether a registration was made in bad faith

6
von Graevenitz, ‘Cluttering and Non-Use of Trade Marks in Europe’ (n 1) 70.
7
von Graevenitz, ‘Cluttering and Non-Use of Trade Marks in Europe’ (n 1) 70.
8
James Mellor and others, Kerly's Law of Trade Marks and Trade Names (16th ed, Sweet & Maxwell 2017) [10-254].
9
Section 37(1) TMA 1994 provides that ‘The registrar shall examine whether an application for registration of a
trade mark satisfies the requirements of this Act (including any requirements imposed by rules)’.
10
[1999] R.P.C. 367.
11
Gromax Plasticulture Ltd v Don & Low Nonwoven Ltd (n ) [379].
12
C-529/07 - Chocoladefabriken Lindt & Sprüngli AG v Franx Hauswirth GmbH [2009] EU:C:2009:361.
13
C-529/07 - Chocoladefabriken Lindt & Sprüngli AG v Franx Hauswirth GmbH [2009] EU:C:2009:361, [54].
14
See Red Bull GMBH v Sun Mark Ltd, Sea Air & Land Forwarding Ltd [2013] E.T.M.R. 53; The TMA 1994 was amended in 2019
by The Trade Marks Regulations 2018 to give effect to Directive (EU) 2015/2436 of the European Parliament and of the Council
of 16 December 2015 to approximate the laws of the Member States relating to trade marks (‘Recast Directive’). The Recast

2
the focus should be on the mental element (i.e. the intention of the applicant). 15 Although academics
and practitioners suggested that the notion of bad faith covers situations where the applicant does not
intend to use the mark for the entire range of goods and services for which the application was filed, 16
this was not a clear matter for the UK courts. This issue arose in Sky Plc v SkyKick UK Ltd.17 Arnold J (as he
then was) referred several preliminary questions to the CJEU including whether registering a trade mark
without any intention to use it in relation to the specified goods or services can constitute bad faith. 18
The CJEU referral in Sky Plc v SkyKick UK Ltd contained an express reference to the fact that over-broad
trade marks are likely to abuse the trade mark system.19

The CJEU stated replied that bad faith cannot be presumed. Rather, it must derive from ‘objective,
relevant and consistent indicia’.20 In addition, the Court clarified that

‘a trade mark application made without any intention to use the trade mark in
relation to the goods and services covered by the registration constitutes bad faith,
within the meaning of those provisions, if the applicant for registration of that mark
had the intention either of undermining, in a manner inconsistent with honest
practices, the interests of third parties, or 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’.21

The CJEU narrowed down the scope of application of bad faith conceptualised as lack of intention to use
the mark to the two situations described above. Interestingly, the Court brought an additional limitation
to the scope of bad faith. Specifically, it emphasized that the applicant must not be considered as filling
the application in bad faith just because at the date of filing the trade mark application, they were not
involved in economic activities matching the goods and services mentioned in the application. 22 Overall,
the above decision was criticized by one commentator as raising the threshold for bad faith and as not
providing a disincentive against practices that allow for over-broad trade marks.23

When the case returned to the EWHC, Arnold J found that part of the applicant’s trade marks had been
registered in bad faith because the specifications included goods and services for which the applicant
‘had no reasonable commercial rationale for seeking registration’. 24 Furthermore, based on the evidence
adduced in the case, the court seemed compelled to conclude that ‘the reason for including such goods
and services was that Sky had a strategy of seeking very broad protection of the Trade Marks regardless

Directive, like its two predecessors, contains bad faith as an absolute ground for refusal of registration.
15
Mellor (n 11) [10-269].
16
Johnson (n 2) 962; Meale (n 1).
17
[2018] EWHC 155 (Ch).
18
C-371/18 - Sky Plc v SkyKick UK Ltd [2020] ECLI:EU:C:2020:45, [47]. At the time when Sky Plc v SkyKick UK Ltd was being
litigated before the England and Wales High Court, UK courts, under the EU (Withdrawal) Act 2018 (EUWA) were still permitted
to make preliminary references to the CJEU under Article 267 of the Consolidated version of the Treaty on the Functioning of
the European Union.
19
[2018] EWHC 155 (Ch) [177].
20
C-371/18 (n ) [77]
21
C-371/18 (n ) [81]
22
C-371/18 (n ) [78]
23
Meale (n 1) 234.
24
[2020] EWHC 990 (Ch) [250].

3
of whether it was commercially justified’. 25 The case was appealed before the England and Wales Court
of Appeal (‘EWCA’) who did not agree with this interpretation of the notion of bad faith. Floyd LJ
considered that although the applicant did not intend to use the mark for all types of computer software
for which it had applied, this should not be considered bad faith. 26 In addition, the judge considered that
strategic applications ‘of sufficient width to cover some further, as yet unformulated, goods within the
same category’27 is a concession that must be made to applicants because otherwise it would ‘create an
increasingly impossible burden on applicants depending on how finely one sliced up the category of
goods or services for which the application is made’. 28 The EWCA interpreted the notion of bad faith in a
way that favours trade mark owners. However, as one practitioner rightly pointed out, one of the
downsides of the EWCA decision in Sky is that ‘the clearance process for any new brand is far more
difficult if the register is cluttered by trade marks with long specifications and broad categories of
goods’.29

On 25 July 2022, the United Kingdom Supreme Court (‘UKSC’) has granted Skykick permission to
appeal.30 As noted by Chave and Jacob, if the UKSC will reverse the way in which the notion of bad faith
was interpreted by the EWCA, ‘that would go a long way to preventing those with overall specifications
from enforcing their marks against those with very different business from their own’. 31

2.3 Revocation for non-use

S46(1) TMA

‘Once registered, there is no institutional control of the register to remove unused marks, rather the approach is
‘‘confidently left to competitors’’17 to clear out unused marks.’32
‘legal revocation provisions as a structural remedy to address 3rd party user difficulties attributable to
full or partial non-use of existing registrations. These provisions are widely viewed as insufficient for
purpose as currently laid down and applied.’33

2.4 Invalidity of registration

S47 (2ZA)The registration of a trade mark may be declared invalid on the ground that the trade mark was registered
in breach of section 5(6).

‘In the UK, although s.47(3) continues to provide that any person may make an application for a declaration of
invalidity, the scope of that has been cut back by art.5 of the Trade Mark (Relative Grounds) Order 2007.37 In
essence, pursuant to art.5 only the proprietor of an earlier mark or right can bring an application for invalidity. The
position is similar at the EUIPO—an application may only be filed by the proprietors of the earlier rights in art.8 of the
25
ibid.
26
Sky Plc v SkyKick UK Ltd [2021] EWCA Civ 1121 [113].
27
[116]
28
[42].
29
Sean Ibbetson, ‘SkyKick loses as Court of Appeal finds Sky did not act in bad faith’ (2022) Ent. L.R. 33(1) 24, 27.
30
UKSC, ‘Permission to Appeal - July and August 2022’ <https://www.supremecourt.uk/news/permission-to-
appeal-july-august-2022.html> accessed 11 April 2023.
31
Lynne Chave and Robin Jacob, Robin, ‘Registered Trade Marks - A System in Crisis and What's to be Done?’
(2022) IPQ 4 169, 172.
32
P. Johnson, ‘“So Precisely What Will You Use Your Trade Mark for?” Bad Faith and Clarity in Trade Mark Specifications’ (2018)
49 IIC 940, 944.
33
UKIPO, ‘Cluttering and Non-Use of Trade Marks in Europe’ (2015) 5
https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/568675/
TM_cluttering_report.pdf

4
EUTMR and proprietors of “another earlier right” under art.60(2).38 Under s.47(4), the Registrar may apply directly to
the court for a declaration of invalidity of a mark registered in bad faith.’ 34

3 Effectiveness of the anti-clogging mechanisms

3.1 Bad faith effectiveness

‘facts and information sufficient to rebut the presumption of good faith would include:

• information sufficient to demonstrate that an applicant is engaged in trade mark squatting,

acquiring trade marks not to use themselves but to sell back, or licence, to the legitimate brand owners

• information sufficient to demonstrate that an applicant is filing trade marks not for their own
trade mark use but merely for the purpose of creating conflict/dispute with others

• information sufficient to demonstrate that an applicant is intentionally seeking to mislead the

public, obtaining the trade mark as an instrument of fraud’.35

According to the public data available in the UKIPO database, bad faith in the form of the lack of
intention to use the trade mark was raised in 159 cases heard by the UKIPO between 17 February 2011 -
9 February 2023. Among these, 103 were oppositions, 46 were invalidity and 10 were revocation
proceedings.

‘These revocation provisions can only be invoked against a registration by third parties, i.e. not by the
IPO or by OHIM, and are only available after five years from grant of the registration31. A revocation
action can also be expected to take some years to reach conclusion, more if appeals are filed, and
revocation actions are relatively uncommon.’36

‘results suggest that non-use is far more extensive than previous work suggested’ 37

‘We note exceptions to this general principle where they arise, but a comparison of a mark applied for
both under these rules in the United States and in Europe, specifically at IPO or OHIM, reveals how trade
mark owners make fairly routine use of their ability to apply for a broader range of goods/services under
the less stringent set of rules that apply to registration at IPO and OHIM.’38

‘One mechanism to balance the interests of existing and of prospective new users, if there were
sufficiently great levels of congestion, would be to change the price of a trade mark registration.’ 39

34
Kerly’s (n 1) 12-043
35
UKIPO, Manual of Trade Marks Practice (20 February 2023) <https://www.gov.uk/guidance/trade-marks-
manual/the-examination-guide> accessed 11 April 2023
36
UKIPO, ‘Cluttering and Non-Use of Trade Marks in Europe’ (2015) 19
37
UKIPO, ‘Cluttering and Non-Use of Trade Marks in Europe’ (2015) 2
https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/568675/
TM_cluttering_report.pdf
38
UKIPO, ‘Cluttering and Non-Use of Trade Marks in Europe’ (2015) 2 70
39
UKIPO, ‘Cluttering and Non-Use of Trade Marks in Europe’ (2015) 5
https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/568675/
TM_cluttering_report.pdf

5
 4 Conclusion

Bibliography

Kerly's Law of Trade Marks and Trade Names (2015)

Barton Beebe and Jeanne C Fromer, ‘Are We Running Out of Trademarks? An Empirical Study of
Trademark Depletion and Congestion’ (2018) HLR 131 948

Darren Meale, ‘SkyKick: a disappointing end to an exciting series of events’ (2020) JIPLP 15(4) 232

Lynne Chave and Robin Jacob, Robin, ‘Registered Trade Marks - A System in Crisis and What's to be
Done?’ (2022) IPQ 4 169-175

Phillip Johnson, ‘“So Precisely What Will You Use Your Trade Mark for?” Bad Faith and Clarity in Trade
Mark Specifications’ (2018) 49 IIC 940