After eight years, multiple rulings from the High Court, a Court of Appeal decision and a Supreme Court overturn, there is finally an outcome of the trade mark battle between Sky vs SkyKick.
The case is an important one, and has serious implications for how businesses manage their brand portfolios, including what may constitute a ‘bad faith’ trade mark registration.
A common trade mark enforcement tactic, particularly among those with the deepest pockets, is to apply for repeat registrations of the same mark every few years, to use broad brush descriptions in the protection sought, and to aggressively assert such rights.
The reason being, under UK and EU trade mark law, a successful applicant gets a 5 year ‘grace’ period post-registration to use their mark on the goods and services specified; if the mark is not used then the registration can be revoked for non-use.
So by seeking ‘evergreen’ protection every few years, including in respect of goods or services which it may not have any intention of supplying, brand owners have been able to deter potential competitors through the continuing threat of trade mark infringement proceedings.
But a recent UK decision means that brand owners need to reconsider their protection and enforcement strategies, and be prepared to evidence that, at the time of applying for registration, they were not acting in ‘bad faith’ but had a genuine intention to use their mark against the goods and services for which they sought protection, and to be enforceable such protection must be described with clarity.
This may all seem common sense, but it has taken eight years and multiple High Court rulings as well as Court of Appeal and Supreme Court decisions to decide so.
Pie in the Sky
In 2016, the broadcaster Sky challenged US software company SkyKick’s use of its brand for email migration and cloud storage solutions, which Sky claimed amounted to ‘passing off’ and infringement of its UK and EU trade mark registrations for the word ‘Sky’.
Attack often being the best form of defence, SkyKick counterclaimed including on the basis that Sky’s registrations lacked precision, were unjustifiably broad, and that it had registered its marks in ‘bad faith’.
After a series of mixed decisions in the High Court, including a referral to the European Court of Justice, both parties appealed to the Court of Appeal, which in 2021 having partly ruled in Sky’s favour, SkyKick further appealed to the Supreme Court.
Despite Sky and SkyKick having since resolved the dispute between themselves, and requesting the Supreme Court appeal be withdrawn, the UK Intellectual Property Office (IPO) nonetheless stepped in to request the Supreme Court make a definitive ruling on when ‘bad faith’ can be inferred.
The Supreme Court overturned the Court of Appeal’s decision, so reining in the scope of Sky’s protection, and determining more generally that where a trade mark applicant seeks excessively broad protection then bad faith may be inferred, making some or all of a registration voidable – Sky’s registrations, for example, included goods not typical of a broadcaster, such as bleaching preparations and whips!
Back to Earth
The ruling goes someway to reassert trade mark registrations as badges of origin, differentiating between the supply of goods and services, rather than as legal weapons for monopoly protection.
The Supreme Court has struck down the routine use of broad brush, or long and rambling, trade mark descriptions through an inference of bad faith. Expect Sky vs SkyKick to be regularly cited in opposition and cancellation proceedings going forward.
The decision underlines the need for UK trade mark applicants to be precise in the scope of protection sought, not only to help secure registration, but to ensure fundamentally that any protection obtained is enforceable. We can hopefully therefore expect to see fewer brands’ enforcement reliant on catch-all phrases and repeat ‘evergreen’ applications.
If you have a trade mark or brand protection or enforcement question, then please contact Scott Appleton: [email protected]