As discussed here, the Supreme Court decision, focused on whether Sky’s registrations were made in bad faith because certain goods and services lacked a genuine intent to use. This has implications for both brand owners and those challenging trade mark validity.
SkyKick’s challenge
SkyKick, a cloud migration service, faced claims from Sky alleging trade mark infringement due to the use of “SkyKick” for cloud services. Sky argued that SkyKick’s use confused consumers and diluted Sky’s established brand identity.
In response, SkyKick challenged the validity of many of Sky’s trade mark registrations, claiming that many of Sky’s goods and services were overly broad and had been registered without a genuine intent to use them.
Can an application for broad categories of goods and service be made in bad faith?
The core question was whether Sky’s trade marks for broad categories like “computer software” were made in “bad faith.” Historically, the courts have struggled to define “bad faith,” as trade mark applicants frequently register a broad range of goods and services to protect their brand without necessarily intending to use the mark across the full spectrum. SkyKick argued that this practice obstructed other businesses and amounted to an abuse of the trade mark system.
The UK Supreme Court’s decision
The Supreme Court found that applying for a trade mark with no intention to use it in relation to specific goods or services could indeed constitute bad faith. Importantly, the Court differentiated between cases where an applicant seeks genuinely broad protection for potential future use and those where no reasonable prospect of use exists. This ruling highlights a more stringent approach, aiming to curb over-broad trade mark filings that create barriers for other businesses.
What does this mean?
For brand owners, this judgment is a call to review and, possibly, narrow the scope of their trade mark filings. Broad applications that lack genuine intent are now more likely to be successfully cancelled (in relation to the broad goods or services only). As the Supreme Court pointed out, overly broad registrations diminish available trade mark options, complicating entry for new players and stifling competition.
Review trade mark portfolios: Brand owners should ensure that trade mark filings align closely with their current and reasonably planned business activities.
Narrowly tailor applications: This judgment encourages a more cautious approach, recommending that companies avoid sweeping classifications without a real intention to use.
Challenge overly-broad Filings: This case sets a helpful precedent for challenging broad trade mark specifications on grounds of bad faith. Although bear in mind that the challenge is not to the entire mark but rather to those goods and services that lack a genuine intent to use.
Brand owners must tread carefully, balancing protective strategies with a genuine intent to use each part of their trade mark portfolio. Where broader terms are used, it is wise to include more specific terms as a potential fallback position and to document the basis for applying for a broad term. Startups, for example, may pivot between different types of software. In such cases, applying for a broad term like 'software' may be justifiable. To future-proof the trade mark, startup applicants should consider specifying the most conceivable types of software in the application.
To find out more about the issues raised in this blog contact Rosie Burbidge.