Kick-ed out – UKIPO applies Supreme Court SkyKick decision in ENERJO opposition

In the case of ENERJO (O/0439/24), the UK Intellectual Property Office (UKIPO) upheld an opposition against an application filed by Cashflow – the specification for which ran to a whopping 81 A4 pages! It found that "the sheer size and disparate nature" of the goods and services applied for amounted to bad faith, citing the Supreme Court’s decision in SkyKick, the weapon of choice for those wanting to challenge overly broad specifications. A detailed analysis of the decision follows.

Background

In 2022, Cashflow Corporation Ltd (Cashflow) applied to register the mark 'ENERJO' in 13 classes. The applicant's specification spanned 81 A4 pages and listed a plethora of goods and services. The application was opposed by SE Bicycles Company Ltd (SE Bicycles), based on 2 grounds:

• section 5(2)(b) of the Trade Marks Act 1994 (TMA) – Cashflow's mark was similar to SE Bicycles' heavily stylised 'Energi' registration (shown below) and sought registration for goods and services that were identical or similar to those for which the Energi Mark was registered, therefore giving rise to a likelihood of confusion amongst the public; and
• section 3(6) TMA - the application was filed in bad faith.

Section 5(2)(b) ground

In view of the differences between the two marks, the UKIPO did not believe that they would be "misremembered or inaccurately recalled for one another", concluding instead that "the points of difference between the marks are such that they will enable consumers to accurately remember which mark was which". On that basis, the UKIPO found that no likelihood of confusion existed, even in respect of identical goods.  As the opposition under section 5(2)(b) failed in its entirety and raised no significant issues, it is not considered further in this article.

Section 3(6) ground

SE Bicycles claimed that Cashflow did not have a bona fide intention to use its mark across the full range of goods and services applied for. In asserting this, it highlighted Cashflow's 81-page specification, arguing that its extraordinary breath evidenced that the application had been filed in bad faith.

Following the commencement of proceedings, and given the significant overlapping issues, the case was suspended pending the outcome of the Supreme Court's decision in SkyKick UK Ltd & Anor v Sky Ltd & Ors (Rev1) [2024] UKSC 36 (SkyKick SC).  Following the conclusion of those proceedings in March 2025, the opposition resumed, and the parties were invited to file further submissions on the relevance and application of SkyKick SC to the section 3(6) ground. The applicant filed additional submissions; the opponent did not.

The UKIPO's decision refers extensively to SkyKick SC, particularly from paragraph 62 onwards by summarising the general principles governing bad faith. Central to the decision was the length and breadth of the specification, which the opponent argued demonstrated that the application had been filed either: (i) with the intention of undermining the interests of third parties, inconsistent with honest practices; or (ii) with the intention of obtaining, without targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark.

UKIPO's decision

In reaching its decision, the UKIPO focused closely on the exceptionally wide and disparate range of goods and services listed in Cashflow's specification, including:

• Class 1: “Aluminium acetate” and “fish meal fertilizers” and “flashlight preparations”
• Class 8: “Truncheons”, “punch rings [knuckle dusters] and “vegetable choppers”
• Class 9: “Ski goggles”, “x-ray films”, “decompression chambers”, “screen saver software”, “body armor”
• Class 11: “Water treatment equipment” and “decontamination showers”
• Class 12: “delivery drones” and “trams”
• Class 36: “Financial services” and “health insurance underwriting”
• Class 37: “Fur care, cleaning and repair” and “snow removal”
• Class 39: “Rental of horses for transport purposes”
• Class 42: “Golf course design”, “research in the field of artificial intelligence technology”, “oil-field surveys” and “weather forecasting”

The UKIPO found it difficult to conceive that a single business would use a trade mark to indicate to customers that it provided goods and services as varied as those in the specification.  On that basis, the UKIPO concluded that the sheer breadth of the specification was sufficient to cast doubt on whether the applicant had an intention to use the trade mark in accordance with its essential function – namely, to indicate commercial origin in relation to all of the goods and services applied for.

In response to the opposition, Cashflow asserted that its application was “genuine and bona fide”, and that it had been filed to “establish, operate commercial and industrial enterprises, create jobs and positively contribute towards the economic development of United Kingdom”. However, the UKIPO considered this vague and unsubstantiated, noting that no evidence had been provided to support this assertion.

Following SkyKick SC, Cashflow submitted additional arguments, including that it had not sought to register its mark in all 45 classes of the Nice Classification.  However, the UKIPO found these to be equally vague and imprecise and concluded that they failed to establish a genuine intention to use the mark for the goods and services applied for.  Reiterating its concern that it was difficult to conceive of how a single business could successfully use a trade mark in connection with such a wide array of goods and services, the UKIPO decided that a prima facie case of bad faith had been established. This finding shifted the burden of proof to the applicant (i.e. it was for the applicant to prove that it had not filed the application in bad faith, rather than for the opponent to prove that it had).

With the roles reversed, Cashflow was unable to rebut the presumption of bad faith, in view of the sheer size and disparate nature of its specification, the lack of any sufficient explanation for this, and the absence of clarity regarding any reasonable business intention. Accordingly, the opposition succeeded in full.

Takeaways

The decision appears to have been a relatively straightforward example of bad faith from the UKIPO's perspective:  the length and breadth of the specification having immediately triggered the 'SkyKick claxon'.

The case reinforces that, where a third party challenges a broad and lengthy specification, the UKIPO will expect reasonable explanations and justifications from the applicant as to why this level of detail was necessary so as to dispel an inference that the application was made in bad faith. In that regard, it is helpful food for thought for those considering making a trade mark filing. The case also reminds us that the scale and nature of an applicant's business is also a relevant consideration. Applicants should be prepared to provide evidence demonstrating the actual scope of their commercial activities and avoid generalised statements such as "to produce and sell commercial products and services on a global scale." Trade mark strategies based on speculative or overly expansive filings are unlikely to survive scrutiny and this applies equally to not only future applications but also existing trade mark registrations (on the basis that bad faith arguments can be raised at any time during the lifecycle of a trade mark).

With this in mind, businesses are advised to audit their trade mark portfolios, including any pending or planned applications, to determine whether their specifications were prepared with the necessary specificity and brevity.  This will help mitigate the risk of oppositions and cancellation actions, thereby safeguarding registrations going forwards. From a purely financial standpoint, revisiting trade mark portfolios can also amount to a considerable cost saving, given that application and renewal fees increase with each extra class that is included.