Bad faith: UKIPO applies SkyKick in “Grayn” case
In this case, the length and breadth of the applied for specification gave rise to a successful bad faith claim against the majority of goods/services.
Grayn AS (the holder) was unrepresented and applied for the word mark “Grayn” as an international registration designating the UK.
An opposition was filed on the grounds of bad faith, a likelihood of confusion and passing off. The bad faith claim was almost entirely successful and is the focus of this summary. The likelihood of confusion and passing off claims both failed. It was particularly noted that the bad faith claim had removed the overlapping categories.
Bad faith claim
The specification applied for spanned 66 pages and included “fire engines”, “spectacle chains”, “betting software” and “metallurgical laboratory services”. The opponent claimed the holder had no bona fide intention to use the mark for such a diverse range of goods/services, and requested the specification be limited to reflect only terms for which the holder had a genuine intention to use the mark.
Grayn filed a defence and counterstatement, but did not file any other evidence. The counterstatement declared the holder had existed for a substantial period of time; had secured other registrations; and that Grayn’s business offers “a unique software platform for sustainability accounting and provides sustainability consulting services”.
The mere fact a holder has registrations in other jurisdictions did not justify a broad specification in the UK, and the UKIPO noted the holder did not explain whether any other jurisdictions (such as the base mark territory) operate an intent to use regime or encourage applicants to use broad terminology in specifications.
Based on how both parties had described the holder’s business, the UKIPO upheld the bad faith claim in relation to all goods/services except for software for sustainability accounting and sustainability consulting services. Applying this finding to the exact terms applied for, the UKIPO proposed to limit the specification down to just two terms, and then to limit those terms further as shown by the bold:
• “accounting software relating to environmental sustainability”; and
• “environmental consultancy services relating to sustainability”.
Without any other evidence or supporting materials, the UKIPO did not determine whether any ancillary goods/services were commercially reasonable.
Supplementary decision
As the UKIPO could not unilaterally limit the specification to the above, Grayn was granted a short deadline to either confirm they agreed, or to put forward alternative wording. The UKIPO has since issued a supplementary decision refusing the UK designation in full, as the holder did not respond.
Case details at a glance
Jurisdiction: UK
Decision level: UKIPO
Parties: Grain Connect Limited v Grayn AS
Date: 11 August 2025 & 30 September 2025
Citation: O/0746/25 and O/0923/25
Decision (PDF): https://dycip.com/grayn
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