22/11/2024
The UK Supreme Court has recently handed down its long awaiting judgment in SkyKick which addressed important questions on the issue of bad faith in the context of filing and enforcing trade marks.
This article provides a brief summary of the key aspects of the Sky vs. SkyKick case, with a more detailed analysis to follow.
Background
The dispute between Sky and SkyKick, originating in 2016, involved allegations of trade mark infringement and passing off by Sky against SkyKick for using the mark “SkyKick” and related figurative marks in connection with email migration and cloud storage services.
What began as a ‘standard’ trade mark infringement claim snowballed into a significant challenge to the validity of Sky’s trade mark registrations. SkyKick contended that portions of Sky’s registrations were invalid having been filed in bad faith, arguing that Sky had no genuine intention to use the marks for numerous goods and services listed, including broad terms like “computer software” and other items such as “bleaching preparations” and “insulation materials”.
The decision
The UK Supreme Court found that “the High Court was entitled to find that the SKY marks were applied for in bad faith to the extent that it did, and the Court of Appeal was wrong to reverse that finding.” SkyKick UK Ltd and another (Appellants) v Sky Ltd and others (Respondents)
“The Court of Appeal was wrong to conclude that the overall width or size of the specification of goods or services can never lead to an inference that an application was made in bad faith” SkyKick UK Ltd and another (Appellants) v Sky Ltd and others (Respondents)
“It would also be anomalous if bad faith could never be inferred in cases where the applicant had chosen to describe the goods and services the subject of its application using broad or general terminology rather than appropriate sub-categories” SkyKick UK Ltd and another (Appellants) v Sky Ltd and others (Respondents)
What does the decision mean for brand owners?
Whilst filing trade mark applications covering broad specifications is not itself indicative of bad faith, large brand owners will be required to adopt a sophisticated trade mark filing and enforcement strategy.
For small brand owners, behaviour of the type undertaken by Sky is unlikely to be relevant and therefore bad faith should not be a major concern.
At the time of filing a trade mark application, the applicant is entitled to seek protection for goods and services for which it intends to use a mark even if that intention does not become reality. However, care should be taken to not over state that intention. Brand owners would be well advised to use more specific sub-categories for goods and services instead of relying on overly broad terms. However, advice should be sought from a Chartered UK Trade Mark Attorney when preparing trade mark applications and considering which goods / services to include.
This is just a brief summary of the key points, and further analysis on the implications of this case will follow.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
