City AM quotes Charlotte Duly on the long-awaited SkyKick v Sky Supreme Court decision
The UK Supreme Court has ruled that media company Sky acted in bad faith when applying for its trademarks, overturning a previous Court of Appeal decision.
The case, which began in 2016, involved Sky suing US tech company SkyKick for trademark infringement. The legal dispute has been significant for intellectual property lawyers due to its potential impact on other businesses.
Charlotte Duly, Head of Brand Protection, comments on the significance of the ruling;
The Supreme Court has allowed SkyKicks’s appeal in part, agreeing with the High Court that the SKY marks were partly applied for in bad faith.
"The fact that SkyKick have been successful in part could mean that holders of broad specifications will need to consider if they have been a little too broad, but the real issue here is defining what that means in practice. This could open a can of worms when it comes to the trade mark registers. The Supreme Court decision means it is possible to infer bad faith where an applicant has included broad goods and services rather than relevant sub-categories. However, it’s worth noting in the present case that Sky had not only applied for broad specifications but were basing infringement proceedings upon goods and services that Sky were unlikely to ever offer. The High Court decision described Sky obtaining broad registrations as a “purely a legal weapon” to use against third parties.
"Whilst today’s decision could lead to a change in how trade marks applications are drafted and possible additional scrutiny of specifications at the examination stage in extreme cases, the UKIPO are unlikely to examine the subjective intentions of an applicant nor investigate bad faith for every broad application filed.
"When determining a trade mark filing strategy there must be consideration of how broad or specific to make trade mark specifications. Broad specifications may still be justified but where such terms are covered, there should be a paper trail documenting the commercial justification for seeking such wide protection. And it remains to be seen if a new wave of challenges or counterclaims relying on the ground of bad faith arise from this decision.
Read the full piece in City AM here.
