Charlotte Duly writes for The Law Society Gazette on the Skykick Supreme Court decision and takeaways for trade mark owners
In the case of SkyKick UK Ltd and Anor v Sky Ltd and Ors, the Supreme Court partially upheld an appeal, agreeing with the High Court that Sky Ltd's SKY trade marks were partly applied for in bad faith due to their overly broad nature.
In an article for The Law Society Gazette, Charlotte Duly, Head of Brand Protection, notes that while UK trade mark law allows for a five-year grace period before use is required, the Sky case demonstrates that excessively wide specifications, especially when enforced aggressively, could be considered bad faith. This ruling does not automatically equate broad specifications with bad faith but does highlight the need for trade mark applicants to have a commercial rationale for the terms covered.
The UK Intellectual Property Office (UKIPO) has not yet changed its procedures following the ruling, and it's unlikely that existing registrations will need amending unless challenged. However, the decision should influence future applications, with expectations of more scrutiny and the potential for bad faith accusations if broad terms are unjustified.
Key takeaways for trade mark owners include the permissibility of broad specifications, the importance of justifying wide terms, the strategic inclusion of narrower sub-categories, and the risk of bad faith findings if challenged.
Owners should ensure they have a commercial justification for seeking wide protection and be prepared for potential UKIPO guidance on handling broad specifications.
Read the full article in The Law Society Gazette here.
