Supreme Court’s decision in Sky v SkyKick is a warning to those filing overly broad trade mark specifications

Posted: 12/12/2024

The long-running saga of Sky v Skykick has continued this year, coming before the Supreme Court. On 13 November 2024, it rendered its judgment on the latest instalment of these proceedings and importantly, the highly anticipated issue of bad faith in trade mark filings.

The issues to be addressed by the Supreme Court were twofold:

• what is the test for determining ‘bad faith’ in s3(6) of the Trade Marks Act 1994; and
• if bad faith is found, what is the correct approach in determining the specification that the proprietor of the trade mark should be permitted to retain?

By way of brief recap, in 2018, the UK TV broadcaster, Sky, brought trade mark infringement proceedings in the High Court against SkyKick, a US cloud management software specialist. SkyKick brought counterclaims for invalidity on the basis of bad faith. Previous reports on this case from the intellectual property team, including the Advocate-General’s opinion, the CJEU’s guidance, the High Court’s judgments and Court of Appeal’s decision, cover the background to date. 

The Supreme Court’s judgment confirms that an assessment of bad faith must include assessing the motive or intention of the trade mark owner at the time of filing. It is a subjective activity that must take into account the individual circumstances of the case. In these proceedings, consideration was given to the purpose of the trade mark system, accepted principles of ethical behaviour, and honest commercial practices. In respect of bad faith, the question is whether or not the trade mark owner intended to use the mark at the time of filing the application; in other words, ‘establishing or reasonably exploring the viability of a business during the grace period’.

Sky’s aggressive enforcement strategy in respect of goods and services, in which no intention ever existed for Sky to supply or provide, was labelled a misuse of the system.

In respect of the second question, the Supreme Court discussed the use of overly broad and general terms categories. The court determined that using broad terms does not in and of itself amount to bad faith, and nor does being unable to demonstrate a commercial plan for ‘every species of goods and services falling within a general description’. However, where broad terms can be broken down into distinct categories or subcategories, and have not been, ‘it would be manifestly unjust if it (the trade mark proprietor) escaped that consequence (a finding of bad faith) simply because it had framed its specification using general terminology’, as opposed to specifying subcategories.

The Supreme Court therefore agreed with the conclusions reached by the High Court in 2018 regarding the validity of Sky’s registrations. SkyKick’s invalidity allegations succeeded in relation to Sky’s registrations that contained broad terms without any intention of use across the goods and services for which protection was sought, such as ‘computer software’, and these were restricted appropriately.

But what does this all really mean in practice? While owners of trade marks may have previously been able to rely on a wide filing strategy, using broad terms and long specifications, this case highlights the risk in doing so. Instead, time should be taken, and significant thought given to identify only those categories and subcategories which there is a genuine intention to use at the time of filing. Evidence pertaining to intention to use at the time of the application should be stored safely. Brand owners should review their current portfolio of marks and specifications for any which contain broad terms such as computer software.

We will likely see an increase in the number of bad faith attacks on broad filing strategies. The UK Intellectual Property Office is considering the decision and any necessary subsequent changes to its policies. Further, the cases that were stayed as a result of this pending decision may now recommence, and we wait to see if they follow suit.

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