Understanding the SkyKick decision: Bad faith – what it means for trade mark law

The case involved a dispute between Sky, the well-known media and telecommunications giant, and SkyKick, a tech company offering cloud management software. Sky alleged that SkyKick infringed its trade marks, which covered an array of goods and services. SkyKick challenged the validity of Sky’s marks, arguing that they were overly broad, lacked "clarity and precision", and were applied to goods and services for which Sky had no genuine intention to use them for.

The Supreme Court looked whether a trade mark could be invalidated (in whole or in part) on grounds that the application was made in bad faith because the applicant did not intend to use the mark for the goods or services for which it sought protection, and whether the use of broad or general terminology could lead to an inference of bad faith. The Supreme Court held that, amongst other things, such an inference was circumstantial, but that the use of broad or general terms can lead to an inference of bad faith.

The Supreme Court's decision has clarified the extent to which trade marks can be protected. One of the key takeaways is that goods and services descriptions must be specific and clearly defined. The Court emphasised that overly broad trade mark specifications, which cover a range of goods and services, without a genuine intention to use them, run the risk of being deemed invalid. This means that applicants must be able to show feasible reasons for wanting to use the trade mark in connection with the goods and services listed in their application. Failure to do so could result in the trade mark being invalidated if challenged. This ruling aims to prevent companies from monopolising trade marks that cover overly broad terms and ensuring that trade marks serve their primary purpose of distinguishing goods and services in the market.

UK trade mark law and practice, has long held that trade marks should only cover goods and services for which there is a genuine intention to use the mark. On filing, an applicant is required to confirm that it has a genuine intention to use the mark for the goods and/or services applied for. This decision reaffirms this principle and takes a firmer stance against overly broad registrations. The Court recognised that allowing marks to cover goods or services for which there is no intention to use the mark could create an unfair monopoly. Importantly, the Supreme Court allowed for partial invalidation of Sky’s marks.

For businesses and brand owners, this decision is a reminder to adopt a focused approach to trade mark applications. Here are some practical tips:

1. Be specific: When filing new trade mark applications, ensure your descriptions of goods and services are specific and reflective of genuine business plans. Avoid overly broad or generic terms and include sub-categories of goods and services instead. An example would be to avoid the broad term ‘computer software’ but instead specify the exact type of software on which the mark will be used
2. Demonstrate genuine intent: Retain any evidence of your genuine intention to use the trade mark for the specified goods and services. This could include business plans, marketing strategies, or other documentation that demonstrates your intent.
3. Review existing trade marks: Review your trade mark portfolio to ensure that your registrations align with your actual or planned use of your marks. If some registrations include overly broad terms, consider amending or limiting them to avoid disputes.
4. Seek legal advice: Given the complexities of trade mark law, it is advisable to seek legal advice when preparing and submitting trade mark applications. A legal professional can help ensure that your application meets the necessary requirements and can provide guidance on how to demonstrate genuine intent.

By staying proactive, businesses can navigate this evolving landscape with confidence. 

Get in touch with our Intellectual Property team if you’d like to discuss further.