Details of the case
The dispute began eight years ago when Sky accused SkyKick of infringing on its registered brand name “SKY”. Sky, known for its broadcasting and telecommunication services, held multiple EU and UK trade marks covering a broad range of goods and services, including the very general category of “computer software.”
Sky argued that SkyKick’s use of “SkyKick” for email migration and cloud storage products infringed on these trade marks. In response, SkyKick challenged the validity of Sky’s trade marks, arguing that Sky had obtained overly broad registrations in bad faith without any real intention to use them commercially for all the registered goods and services.
UK Supreme Court Ruling
On November 13, 2024, the Supreme Court ruled in favour of SkyKick in part, affirming that Sky’s trade mark registrations were partially filed in bad faith. The Supreme Court, led by Lord Kitchin, concluded that applying for overly broad trade mark coverage without a commercial justification could constitute bad faith, especially if the primary purpose was to secure a legal monopoly and potentially block competitors rather than to protect genuine brand usage.
Lord Kitchin outlined that trade marks should not be used as “legal weapons” against third parties unless there is a clear, commercially justifiable intention to use the trade mark for the goods or services specified.
Even though this article is focused on the bad faith aspects found in the SKY trade marks, it is worth noting that SkyKick's actions amounted to an infringement of the SKY marks due to its Cloud Backup services as SKY had this area rightfully protected.
What Constitutes Bad Faith in Trade Mark Applications?
This case brings renewed focus to the concept of "bad faith" in trade mark law, especially in the UK and EU jurisdictions. Bad faith in this context generally means that a trade mark application is made with dishonest intentions, such as blocking competitors without a genuine intention to use the mark for the specified goods and services. Lord Kitchin’s judgment underscored that applications lacking a clear commercial purpose for the claimed protections might lead to partial or full invalidation of the trade mark.
Trade mark law aims to protect brands from infringement and prevent consumer confusion. However, when large corporations apply for trade marks on an extensive array of goods and services, it raises the issue of whether these applications are being used to stifle competition rather than serve legitimate commercial interests. The Supreme Court’s judgment affirms that broad trade marks may still be challenged if the applicant cannot justify an intent to use the trade mark in all claimed areas.
Takeaway
The Supreme Court's decision in the SkyKick case marks a pivotal moment in UK and EU trade mark law, emphasising the requirement for a legitimate commercial intent behind trade mark applications. While this ruling could lead to fewer overly broad trade marks, it ultimately encourages a fairer approach, where trade marks should match what a company actually plans to do.
This shift could impact many industries, pushing businesses to rethink how they protect their brands and ensuring that trade marks are used to support real business goals -not just as a tool to block competitors.
