SkyKick v Sky: guidance on what constitutes bad faith and how this may impact on trade mark filing strategies.

The Supreme Court has today handed down the long awaited decision in the case of SkyKick UK Ltd ("SkyKick") and another (Appellants) v Sky Ltd ("Sky") and others (Respondents).  We are still digesting the long decision and a more detailed analysis will follow, but a short summary of the bad faith aspects of the decision is below.

Background

The decision arises out of an infringement claim made by Sky, claiming that SkyKick had infringed five of their SKY registered trade marks, due to their use of the SKYKICK mark in relation to email and cloud storage products.  The SKY registrations were broadly registered across a range of goods and services classes.  At the High Court, it was held that Sky had applied for the SKY trade marks in bad faith because the specifications contained goods and services which Sky had never intended to use their trade mark, as well as broad categories of goods and services where Sky could not have intended to use their mark across their breadth, which rendered them partially invalid.  The Court of Appeal reversed this finding on appeal, finding that Sky had not acted in bad faith.  

The Decision

• The Supreme Court opted to deliver this judgment (with the support of the UKIPO) in order to clarify issues which they believed to be in the public interest, even after the appeal was withdrawn by SkyKick following the conclusion of a settlement between the parties.
• Lord Kitchin gave the leading judgment with which the Justices agreed.  The aspects which relate to bad faith can be summarised as follows:
  • That the Court of Appeal was wrong to conclude that the overall width or size of the specification of goods or services can never lead to an inference that an application was made in bad faith and will depend on the circumstances.
  • It would also be anomalous if bad faith could never be inferred in cases where the applicant had chosen to describe the goods and services covered in the specification using broad or general terminology rather than appropriate sub-categories.
  • The fact that Sky had relied on the full range of goods and services for which the SKY marks were registered, and maintained this position until around five weeks before trial, supported the argument that Sky had applied to register the marks in respect of a wide range of goods and services they did not intend to sell or provide, and yet were prepared to deploy the full armoury of their trade mark rights against another trader whose activities were not likely to cause confusion and did not amount to passing off.
  • That the High Court had sufficient material before it, and was entitled to find that, SkyKick had established their case that Sky had applied for and were prepared to take enforcement action for alleged infringement of the registrations in respect of goods and services of such a range and breadth that it was implausible that Sky would ever provide them, and that the procedure used to come to this finding was not unfair.

Takeaways

• UK trade mark law requires an applicant to make the statement that they have an intention to use their trade mark in relation to the goods and services for which registration is sought when an application is made.
• A period of five years is permitted from the date of registration for a trade mark proprietor to put their trade mark to genuine use in relation to the goods and services covered, following which a registration can be revoked on the grounds of non-use in relation to any goods/services which have not been put to genuine use by way of revocation proceedings.
• As ever, the facts of a particular case will be relevant when assessing whether or not an application has been filed in bad faith, but applicants should review their trade mark specifications and proceed with care: a wide and broadly drafted specification may now be deemed to be made in bad faith if the applicant has no commercial justification for including broad terms or where it appears that the inclusion of a widely drafted specification has meant that a trade mark registration has been obtained as a legal weapon to use against third parties.
• When drafting trade mark specifications, a balancing act must therefore be struck between coverage of goods and services which are being used and for which use is reasonably contemplated in the future, and ensuring that specifications are not so overreaching as to be commercially unjustifiable.