The SkyKick UK Ltd v. Sky Ltd case has set precedent for “bad faith” trade mark. It will particularly impact future trade mark filings and enforcement. The Supreme Court’s recent judgment, which we have linked below, on November 13, 2024, has overturned the Court of Appeal’s decision and expanded on key aspects of bad faith.
What is bad faith trade mark filing?
(6)A trade mark shall not be registered if or to the extent that the application is made in bad faith.
Section 6 of the Trade Marks Act 1994 (TMA 1994), states the following:
TMA doesn’t provide a definition of bad faith. In simple terms, a bad faith trade mark application is defined by a dishonest intention or conduct that falls short of honest commercial standards. This intention of conduct is to be judged by a reasonable and experienced individuals in the field.
The intentions of the applicant at the time of filing is crucial. An overall assessment of all the relevant factors is necessary to determine bad faith, and it cannot be presumed solely because the applicant lacked economic activity related to the goods or services at the time of filing.
Background to SkyKick v Sky
The dispute began when Sky, a well known broadcaster you would be aware of, accused SkyKick, a cloud services provider, of infringing its trade marks. SkyKick made a counterclaim, claiming that Sky’s trade marks were invalid due to being registered in bad faith.
Although the case was settled out of court, the Comptroller (as intervener) requested a ruling from the Supreme Court to provide clarity to the UK Intellectual Property Office (IPO). The primary issue being asked to address was whether Sky’s broad trade mark specifications, which covered goods and services they never intended to market, constituted bad faith.
The Supreme Court has ruled that the Court of Appeal was wrong to overturn the High Court’s decision, which found Sky’s trade marks partly invalid due to bad faith. The judgment emphasised that overly broad trade mark specifications could indeed suggest bad faith, especially if the applicant never intended to use the mark for all specified goods and services.
Opinion on the judgment
The Supreme Court’s decision is very important – it sets a precedent that could impact how trade marks are registered and challenged in the future. The judgment confirms that trade marks with broad specifications can imply bad faith. The ruling means that trade marks should be filed with precise terms, which describe the exact nature of products or services being offered under the mark. This historic decision is likely to benefit new trade mark filers by allowing them to challenge historical trade marks, which were registered in overly broad terms. This would be a common defence used for trade mark oppositions in the UK.
Existing trade mark owners, especially companies with well-known friends, may need to reassess their trade mark portfolios to ensure their trade mark complies with this new standard. This would result in a better, more thought trade mark registration process.
This ruling highlights the importance of filing trade marks in classes and terms where there are genuine business intentions. This means more precise terms for trade marks going into the future.
Sources
SkyKick UK Ltd and another (Appellants) v Sky …
UK Supreme Court’s SkyKick Judgment Sends Trademark …
