UKIPO applies SkyKick in Unite the Union opposition

One of the topics for discussion at last month’s Retromark conference was the end of the Skykick saga and the implication on trade mark filing practice [IPKat write ups here and here]. One of the audience polls at the sessions was the question, “Will SkyKick lead to a reduction in filings for long specs and broad terms?”, to which attendees voted 68:32 that it would.

The UKIPO has been busy applying that decision in practice, with a recent decision of the Opposition Division upholding an opposition on bad faith grounds: Unite Faith Workers’ Fellowship (O/0369/25).

The applicant and opponent

The applicant, UFWF, is a subsidiary of the Anglican Foundation. It claimed that it “undertakes research, events and in our Senior Research Fellow, Revd Dr David Isiorho, heads up the academic team of black and ethnic minority theologians.” The Hearing Officer was, however, unsure exactly what UFWF’s intentions were, concluding that it appeared to be focused on theological research and events. This vagueness was compounded by the extreme length of the specification, which ran to 47 pages of the decision.

The opponent was Unite the Union, which is a union and accordingly represents workers, negotiates pay and conditions and organises events. It relied on three marks, UNITE, UNITE THE UNION and a figurative mark including the wors “unite theUNION”. Those marks covered those usual activities of a union as well as some services relating to research and training.

The application

The application, which was solely sought in class 25, i.e. 47 A4 pages of specification for that single class covered a huge number of overlapping services. While the application covered the more understandable research and events-related services, it also covered everything from accounting services for farmers to gas meter reading, as well as some fruitier retail services that I will avoid mentioning lest this post gets blocked by spam filters.

Unite the Union relied on sections 5(2)(b) of the Trade Marks Act 1994 (i.e. likelihood of confusion), 5(3) (i.e. protection for marks having a reputation), and 5(4) (i.e. unregistered rights in the same signs as were protected by the trade marks, as well as its own use of the phrase UNITE FAITH WORKERS). It also relied on s.3(6) (i.e. bad faith) on the basis that the mark was filed in the context of a dispute between the applicant’s directors and Unite the Union as well as the breadth of the specification sought.

UFWF filed a counterstatement but no actual evidence. Unite the Union filed evidence in the form of a witness statement with exhibits. The opposition was stayed pending the Supreme Court’s decision in Skykick.

 

The decision

The Hearing Officer started with the bad faith ground, considering that if that ground succeeded, the other grounds would not need to be addressed.

He considered the test to be applied, and quoted at length from the Supreme Court’s decision. He noted that an allegation of bad faith is a serious one, and one which must be “distinctly proved”.

The broad specification

The Hearing Officer started by going straight to the breadth of the services claimed, questioning how an organisation could use the mark to indicate origin for such a varied specification, and commenting that the breadth was “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.”

Given that UFWF had failed to cogently explain its business, or the reasons for the breadth of specification, he found that some of the services would clearly not be covered by UFWF’s intended business. Applying SkyKick, and in particular paragraphs [252]-[254], where Lord Kitchin referred to the opportunity for an applicant to justify the specification (which had not been done in this case), and the apposite example provided by the Comptroller-General in SkyKick of an applicant applying for everything within class 45, the Hearing Officer concluded that the application was prima facie filed in bad faith, and that UFWF had not provided sufficient justification for the specification claimed.

The context of the application

The Hearing Officer considered Unite the Union’s evidence of the current use of the mark, which was in large part critical of the opponent. He concluded that:

“32. While I cannot speak to the merits of the claims against the opponent, I am of the view that it is reasonable to accept the evidence as duly demonstrating that the applicant’s sole purpose was to interfere with or undermine the opponent’s business by way of an ongoing campaign against it via websites and social media. In addition, I note that the evidence above shows the applicant even using one of the opponent’s marks on its website. Therefore, it can be said that the applicant’s claims could be construed as being made under the guise of a branch that misrepresents itself as part of the opponent’s organisation. Lastly, I note that at no point in the opponent’s evidence of the applicant’s activities does it attempt to make it clear that the applicant is not part of the opponent’s operation. All of this, in my view, can reasonably be said to point to the applicant having a clear intention to undermine the opponent’s business without having any actual intention to use the mark for any legitimate business purposes.”

 

Conclusions

While the facts of this case are quite uncommon, and UFWF failed to put in much by way of evidence, it shows the power of SkyKick when applied in practice. It shows that a genuine and sound explanation may be needed for broad specifications. Providing evidence for unlikely goods/services (e.g. the common ‘whips and saddles’) might be difficult, and potentially embarrassing for applicants to justify.

From the perspective of an opponent or applicant for invalidity, this case shows the lengths to which parties need to go to raise a prima facie case that the application was made in bad faith. To do so is often difficult and expensive, meaning that bad faith likely still remains something best deployed when there is strong evidence of misuse of the trade mark system or no other grounds are available.