After many years of proceedings, the long-waited trade mark case Sky v SkyKick has finally reached a decision at the Supreme Court today. The Judgment contains clear direction on when a trade mark has been registered in bad faith.

Impact

Owners of UK registered trade marks with broad specifications are now increasingly vulnerable to their marks being subject to invalidity attacks on the basis of bad faith, particularly where there is no intention to use such a broad specification. Trade mark owners should liaise with their trade mark advisers to review their portfolio and filing strategy, and how the decision may impact any ongoing or potential disputes.

Where we are already handling UK trade marks on your behalf, we will be reviewing whether your UK trade mark registrations need to be reviewed and whether the results of this case will affect any disputes you are currently involved with.

Background

• Sky brought actions against SkyKick for infringing its trade marks across a range of goods and services, and SkyKick in return challenged the validity of Sky’s trade marks.
• SkyKick argued that Sky had applied for its trade marks in “bad faith” and that they were thus invalid. Skykick had alleged that Sky’s trade mark applications were far too broad and separate from its core business and that Sky had no genuine intention to use the marks for the claimed goods and services. One of these terms was “computer software”.
• In the High Court, the Judge found that Sky had acted in bad faith and its trade marks were partially invalid, but SkyKick’s services had infringed Sky’s trade marks.
• Sky appealed the decision on bad faith, and Skykick cross appealed the decision on infringement.
• The Court of Appeal found that Sky had not acted in bad faith when registering its trade marks, and SkyKick’s appeal on infringement was dismissed.
• Skykick appealed to the Supreme Court the bad faith decision made by the Court of Appeal.
• A key issue considered by the Supreme Court was the basis for a finding that an application to register a trade mark had been made in bad faith.

Decision

• The Supreme Court affirmed the Court of Appeal’s finding on infringement.
• The Supreme Court reversed the Court of Appeal’s finding on bad faith and held that the High Court was entitled to find that the SKY marks were applied for in bad faith to the extent that it did.
• An application to register a mark in respect of a broad category of goods or services may be made partly in bad faith in so far as the broad description includes distinct sub-categories of goods or services in relation to which the applicant never had any intention to use the mark. It would be anomalous for traders who use broad terminology to describe the goods and services for which they seek protection to find themselves in a more favourable position than those who use appropriate sub-categories to describe the same goods and services.
• An applicant does not have to have a commercial strategy to use a mark for every possible species of goods or services falling within the specification. Nor is it an objection that the applicant has applied for a wide range of goods and services using class headings or other general terms.