Last week, the UK Supreme Court handed down its long-awaited decision in the case of Sky v SkyKick. This round of litigation follows judgments given by the High Court and the Court of Appeal, in which differing outcomes were reached. The Supreme Court has ultimately decided that Sky had applied for various trade marks in bad faith and refined the definition of bad faith in the context of UK registered trade marks.
Sky initially brought proceedings against SkyKick in 2016 on the basis that they had infringed 4 of Sky’s EU trade marks and 1 of their UK trade marks. In response, SkyKick counter-claimed for partial invalidity on the basis that the specification of the marks’ goods and services lacked clarity and precision, and that they were filed in bad faith due to a lack of intention to use the marks in relation to certain goods and services.
In the first instance, the High Court found that Sky’s trade marks had partly been applied for in bad faith and adjusted the marks’ specifications accordingly (the High Court had some assistance from the CJEU in reaching this part of their decision). However, it was ultimately found that SkyKick had infringed Sky’s trade marks in their amended form nevertheless. The Court of Appeal then reversed the High Court’s decision in relation to bad faith and restored the specification to its original form on the basis that Sky did not need a commercial justification for each item listed in the category of computer software for it to have been made in good faith for the category as a whole. SkyKick was then granted permission to appeal this decision to the Supreme Court.
The Supreme Court held that the Court of Appeal was wrong to reverse the High Court’s findings on bad faith and stated that it was incorrect to say that there could never be an inference of bad faith where broad terms are used to describe goods or services in a specification. Additionally, the Court of Appeal had failed to consider Sky’s conduct leading up to the initial trial, which demonstrated that Sky had “secured these registrations across a great range of goods and services which they never had any intention to sell or provide, and yet they were prepared to deploy the full armoury presented by these SKY marks against a trader whose activities were not likely to cause confusion”. In relation to infringement, the Supreme Court held that SkyKick had only infringed Sky’s marks on one instance, which was in line with the Court of Appeal’s judgment.
This decision demonstrates the importance of limiting goods and services to those that the applicant is genuinely intending to use at the time of their application and is good for any small businesses who have been targeted by well known brands. Additionally, the UKIPO paused several actions that either challenge the validity of a UK trade mark or oppose the registration of a UK trade mark while they awaited this decision. These actions can now proceed to be decided by the UKIPO.
If you have any questions on the above, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
