Surprise ruling in sky trade mark case impacts broad goods and services terms and lengthy trade mark specifications

The long-running trade mark dispute between Sky plc and SkyKick, Inc., which began in 2016, has concluded in a landmark ruling from the Supreme Court. The decision has significant implications for new trade mark filings, in terms of the need for focused and precise goods and services specifications, and paves the way for bad faith invalidity actions where overly broad goods and services are covered by existing trade marks.

The dispute arose when Sky brought trade mark infringement proceedings against SkyKick in respect of five of its registered trade marks and in response, SkyKick claimed that Sky’s trade marks were registered in bad faith because its trade mark specifications contained certain goods and services which it had no intention to use.

Central to the dispute was whether a registered trade mark could be invalidated, in whole or in part, because the application was made in bad faith with no intention by the applicant to use the mark for the goods or services for which protection was sought. The case has been closely watched by trade mark practitioners, due to the significant potential impact on bad faith applications and the specification of goods and services.

Following an initial trial at the High Court, where SkyKick was found to be infringing Sky’s trade marks, Sky’s trade marks were also partially invalidated on grounds of bad faith.

Sky appealed to the Court of Appeal, which overturned the High Court’s finding of bad faith. It determined that merely applying for a mark covering a very broad range of goods and services is not evidence of bad faith and that Sky’s broad trade mark specifications could be justified by its substantial business interests in the computer software sector.

In the final phase of the saga, SkyKick took the case to the UK Supreme Court, which upheld the High Court’s finding that Sky had acted in bad faith, without any conceivable commercial rationale for seeking such overly broad protection in its trade mark specifications.

The biggest takeaway from the decision is that brand owners should take caution when filing trade mark applications with broad terms, e.g. computer services, as the Supreme Court’s finding opens the door for broad registrations to be attacked on grounds of bad faith. Additionally, the decision brings uncertainty for businesses which have previously sought extremely lengthy “all term” lists within a particular class of goods or services. No doubt the UK Intellectual Property Office will issue its own guidance soon.