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Landmark case sees trade mark specifications cut down on grounds of bad faith.

29 April 2020. Published by Ben Mark, Partner and Sarah Mountain, Senior Associate

Today, the High Court handed down judgment in Sky v SkyKick. The judgment follows the CJEU's 29 January 2020 decision, which answered various questions that the High Court had referred to it, back in June 2018.

The preceding CJEU decision (see our article on this here) was somewhat underwhelming but today's judgment is more ground-breaking and takes one aspect of the CJEU's decision further: namely that applying to register a trade mark without any intention to use it for specified goods or services may constitute bad faith.

Sky had taken an expansive approach to trade mark filings and had used extensive specifications to seemingly protect a wide range of goods and services (some of which, it was found Sky had no intention of using its marks for). Today's judgment saw both this approach and Sky criticised for filing trade mark applications "purely as a legal weapon against third parties". As a result, large sections of Sky's specifications have been declared invalid, on grounds of bad faith. This also resulted in Sky being unable to rely on those invalidated goods and services, for the purposes of its infringement claims against SkyKick.

The decision may initially trouble brand owners. However, it will not affect a trade mark's ability to protect either core goods and services or goods and services that brand owners believe they may use their marks for. Going forwards, a trade mark filing strategy that reflects this should avoid similar judgments.

For existing trade mark registrations, the Court made clear that a mixed specification (i.e. one which contains both goods and services that the applicant did and did not intend to use its mark for) will not taint or invalidate the registration, as a whole.

A full copy of today's judgment is available here