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Law firm RPC comments on ground-breaking trade mark referrals case Sky v Skykick

Published on 01 May 2020

Today, Lord Justice Richard Arnold handed down a ground-breaking decision for trademark referrals in the UK High Court's case Sky v Skykick.

Commenting on the UK High Court's decision, Ben Mark, partner at the City law firm RPC said:

“The preceding CJEU decision was somewhat underwhelming but today's judgment is more ground-breaking and takes one aspect of the 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.

“Today's judgment saw Sky criticised for filing trade mark applications ‘purely as a legal weapon against third parties’. As a result, large sections of its specifications were declared invalid, on grounds of bad faith.

“The decision may initially trouble brand owners. However, it will not affect a trade mark's ability to protect 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 (containing goods and services that the applicant both did and did not intend to use its mark for) will not taint the registration, as a whole."