Sky v SkyKick

In a key case for trade mark law, the Supreme Court recently handed down its long-awaited judgment in Sky v SkyKick. The legal issue at hand was whether Sky’s trade marks had been validly registered, given the broad scope of their coverage.

Originally, Sky sued SkyKick, a cloud management company based in the US, for trademark infringement and passing off due to the similarity in their names. However, the case escalated to the Court of Justice of the European Union and ultimately the Supreme Court, where the validity of Sky’s trade marks came under scrutiny.

In their appeal, SkyKick argued that Sky’s trade marks were registered with excessive breadth and were filed for the purpose of enforcement rather than a genuine and honest intention to use the marks for all the goods and services specified.

The Supreme Court ruled that Sky’s trade marks had indeed been filed in bad faith, as there was no intention to use the marks for certain goods and services. As a result, the specifications of the trade marks should be restricted accordingly.

Sky’s trade marks will remain valid only for the goods and services where there is a genuine intention to use them.

Bad Faith Registrations

In the UK, a trade mark registered in bad faith will be invalidated or, if still in the process of registration, refused. Although no clear definition of “bad faith” exists within the legislation, the Intellectual Property Office (IPO) addresses bad faith under Section 3(6) of the Trade Marks Act 1994, which prohibits applications made in bad faith.

The IPO published a Practice Amendment Notice in 2023 (PAN 1/23) to revise and clarify its policy on raising objections based on bad faith. It states that, where there are clear facts and information suggesting a dishonest or sinister motive for filing a trademark, the IPO will present those facts to the applicant.

Courts will only consider the applicant’s intention at the time the application was submitted. This is a subjective factor that must be assessed by reference to the objective circumstances of the specific case.

In the Sky v SkyKick case, the Supreme Court concluded that bad faith can be inferred from the broad and vague scope of the trade mark specifications, as well as a lack of genuine intent to use the marks. However, this determination typically depends on the particular facts of each case.

Berry Smith Comments

The Supreme Court’s ruling in Sky v SkyKick is poised to significantly influence how businesses approach trade mark applications. Companies that have traditionally adopted a broad strategy—seeking to cover a wide range of goods and services—must now carefully evaluate the scope of their intended use and ensure they can demonstrate a genuine intention to use the trademark for specific purposes.

Many cases that were put on hold pending this judgment are now expected to proceed.

For future applications, businesses should collate evidence and maintain records of their commercial decision-making processes to clearly demonstrate intention or commercial logic.

At Berry Smith, we have extensive experience in trade mark matters and other intellectual property issues. We are here to ensure your business receives the legal protection it needs to grow.

For more information or to schedule a consultation, please do not hesitate to contact us:

Email: commercial@berrysmith.com
Phone: 02920 345511

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