In today’s competitive business landscape, establishing a strong market presence is essential for success. A trade mark acts as a key symbol of a company’s brand identity, making its registration a crucial aspect of brand protection. However, in the UK, registering a trade mark is only the first step; businesses must also meet the use requirement to preserve the validity and enforceability of their trade mark rights.

The recent landmark decision in SkyKick UK Ltd (“SkyKick”) v. Sky Ltd (“Sky”) illustrates that while brand owners should consider the future direction of their business, they should think twice about obtaining marks for goods and services which they have no intention of using.

This legal battle had been running for several years and Sky had originally brought a claim against SkyKick for infringement of its registered trade marks for SKY by using SkyKick in relation to email and cloud storage products and services. However, SkyKick denied infringement and counterclaimed that Sky’s marks were invalid on bad faith grounds.

Summary of the Case

After an eight-year legal dispute, the UK Supreme Court issued a landmark ruling that Sky’s claims against SkyKick that its activities amounted to trade mark infringement were partially invalid due to overly broad registrations. Sky had applied for trade marks in categories of goods and services that it could never have intended to put on the market; these included “computer software,” alongside items such as “bleaching preparations” and “whips”. This ruling highlights that broad trade mark registrations may lack the distinctiveness required to represent the actual scope of the goods and services which the business offers, leaving them vulnerable to challenge by third parties such as SkyKick.  

The Court found elements of bad faith in Sky’s actions; under trade mark law if an application to register a trade mark has been made in bad faith, it will be invalidated. Although the legislation does not define bad faith, registering a trade mark with a dishonest motive that falls short of acceptable commercial standards in the relevant field can constitute bad faith. In this case, the court described the contested trade marks as ‘framed in very general terms’ and covering ‘an enormously wide range of goods and services’. The court found that Sky had failed to demonstrate any commercial rationale for framing their trade mark applications so broadly, appearing instead to have pursued a strategy of seeking excessively wide protection without regard for any legitimate commercial justification. This decision highlights the restrictions on overly expansive trade mark claims, emphasising the importance of specificity and genuine intent in trade mark applications.

On infringement, however, the Supreme Court upheld the Court of Appeal’s finding that due to the narrowing of the SKY marks’ specifications, only some, but not all, of SkyKick’s goods and services were infringing.

Some critical takeaways for businesses:

• It is essential that trade marks are registered with specificity, ensuring that the goods and services covered align with the actual or intended use of the mark – Having classes with extremely broad specifications opens the door to attacks and challenges from third parties.

• Brand owners should therefore draft their trade mark applications thoughtfully, ensuring that the scope of protection is appropriate and justifiable. By adhering to these principles, businesses can safeguard their intellectual property while maintaining compliance with the legal provisions. Ultimately this will avoid unnecessary disputes and uphold the value of their trade mark portfolios.

• Businesses should also ensure that their registered marks are put to genuine use in the UK. This is because a trade mark registration can be revoked on the ground that within the period of five years following the date of completion of the registration procedure, or for an uninterrupted five-year period at any time from that date, it was put to no genuine use in the United Kingdom, by the proprietor or with their consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use. For example, if you register a mark in a broad range of classes but do not use the mark in each of those goods and services listed on the registration, it leaves you mark vulnerable to challenge by a third party on the basis that your registered mark has not been put to genuine use in respect of all of the class terms in which it was registered.

How we can help

We can assist you in all aspects of trade mark protection, whether that is in respect of trade mark registration and protection, carrying out trade mark due diligence or maintaining your trade mark portfolio. For strategic advice on protecting your trade marks or intellectual property law generally, please contact us.