Sky Kick-ed - Supreme Court rules on bad faith in trade mark applications

"In a landmark ruling, the Supreme Court of the United Kingdom has overturned the Court of Appeal’s decision in this case and found that the broadcaster and broadband provider Sky applied for its SKY trade marks partially in bad faith. This decision deals a blow to trade mark owners in the UK, but also provides some much-needed clarification of the law on this issue.

"Such was the significance of the proceedings that the UK Government intervened, and judgment was handed down even though the parties had settled at the Court door.

"The Supreme Court ruled that it is reasonable to infer from the size and nature of the list of goods and services the subject of the trade mark application and all the other circumstances, including the size and nature of the applicant’s business, that the application constituted, in whole or in part, an abuse of the system and was for that reason made in bad faith.

"This means that unless the trade mark owner is able to justify the size and nature of its list of goods and services relative to its business, the goods and services inferred to have been applied for in bad faith can be struck out.

"In a further significant finding, the Supreme Court held that Sky’s initial reliance in Court against SkyKick on a wide range of goods and services that it registered but never used, supported the allegation that Sky had originally applied for its trade marks in bad faith. This means that conduct after an application has been filed can be taken into account as evidence of the applicant’s bad faith at the time of filing the application.

"This decision will curtail the ability of businesses to prevent others from using trade marks in respect of goods and services that they themselves cannot justify having registered. As such it will support competition in the marketplace and be broadly welcomed by smaller businesses. Trade mark owners and practitioners, on the other hand, will certainly need to think harder about whether their applied-for list of goods and services is justifiable, and adopt greater caution in how they present infringement cases to the Court, for fear of losing their trade mark protection."

An extract of Jim's comments was published in World Trademark Review, 13 November 2024, and New Law Journal, 20 November 2024, and can be found here and here.