ENERJO and SkyKick: The Boundaries of Bad Faith and the Future of Broad Filings

The UKIPO’s decision in SE Bicycles Company Ltd v Cashflow Corporation Ltd (O/0439/25) represents one of the first significant applications of the UK Supreme Court’s guidance in SkyKick on bad faith. The case offers much-needed clarity on how the UKIPO will assess trade mark applications that span unusually broad and diverse specifications, and it reaffirms that expansive filings are not inherently objectionable, provided they are underpinned by a genuine commercial rationale.

The facts of the case were briefly as follows. Cashflow Corporation Ltd applied to register the word mark ENERJO across 28 classes, covering a sweeping range of goods and services from industrial adhesives and pharmaceuticals to aircraft, telecommunications, and weather forecasting. The specification extended over 120 pages and even included items such as “dinoterb”, a banned pesticide, illustrating the almost indiscriminate breadth of the application. Unsurprisingly, this raised concerns with SE Bicycles Company Ltd, the proprietor of several earlier ENERGI marks, who filed an opposition based on two grounds: a likelihood of confusion under section 5(2)(b) of the Trade Marks Act 1994, and bad faith under section 3(6).

The opposition under section 5(2)(b) was ultimately rejected. SE Bicycles relied on multiple earlier registrations, but failed to establish genuine use for three of them. Only the most recent registration, which was not subject to the use requirement, was taken into account. While the marks ENERJO and ENERGI shared some visual and aural similarities, the UKIPO held that the overall differences, including distinct endings and stylisation, were sufficient to preclude a likelihood of confusion, even where the goods were identical. The opposition on this ground therefore failed.

However, it was the bad faith allegation that proved more compelling. The UKIPO found that the sheer breadth and diversity of the specification filed by Cashflow Corporation Ltd was inherently implausible, particularly in the absence of any supporting evidence. No business plans, meeting minutes, prototypes, or development records were provided to justify such an expansive application. The applicant’s vague assertions of intending to “enter the UK market” were deemed insufficient. On this basis, the tribunal concluded that much of the filing had been made in bad faith, either because there was no real intention to use the mark for large parts of the specification, or because the application was designed to secure rights with no legitimate commercial justification.

Importantly, the decision once again clarifies that a bad faith challenge does not necessarily invalidate an application in its entirety. The UKIPO applied a nuanced, targeted approach, striking out the classes for which bad faith was found, but allowing the application to proceed in respect of goods where a genuine intention to use could be inferred. Specifically, only the goods and services in Classes 25 (clothing, footwear, headgear) and 32 (non-alcoholic beverages and related goods) survived the opposition. The remaining classes, spanning most of the Nice Classification system, were removed on the basis that the application was not filed in good faith.

While the present case is an extreme example of an overtly broad specification, a more nuanced challenge arises when a brand owner genuinely seeks to expand into new goods or services but lacks contemporaneous documentation to support that intent. This scenario is particularly common among small and medium-sized enterprises, which may not maintain a detailed paper trail of strategic plans. In contentious proceedings, we are likely to see an increase in bad faith allegations, especially during portfolio reviews several years post-filing and when trade marks are updated or re-filed. Intention is subjective, but it is proven by the supporting evidence of the circumstances, such as documents showing product development, business expansion plans, or strategic brand building. It is therefore prudent for trade mark owners actively to proactively retain records that demonstrate their intention to expand, such as internal planning documents, product development notes, or board meeting minutes.